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 .
Response to Arguments
Applicant's arguments filed 3/17/2026 have been fully considered and are responded to in the order presented. Regarding the primary reference (Kondo et al., US 20090081553 A1), Applicant states “a solid electrolyte layer is fundamentally distinct from a discrete coating on a separator, both in its physical construction and its functional role within an electrochemical cell. Thus, these elements are not interchangeable layers, but instead represent different approaches to battery architecture.”
Examiner disagrees. Kondo discloses an all-solid secondary battery includes a substrate (insulating mesh [0105-0108]) having external surfaces coated with a solid electrolyte comprising silver iodide (see “AgI” solid electrolyte compounds [0061-0095]). Kondo’s AgI-coated mesh is disposed between the anode and the cathode portions of the battery ([0029, 0190]), and thus meets the limitation of a separator. Applicant’s argument that a solid electrolyte coating cannot function as a separator coating is not persuasive. Examiner notes the instant specification and previous versions of the instant claims recite the claimed battery separator may be coated with a coating comprising “solid-state electrolyte materials or particles” (see pg. 17 of instant specification).
Regarding the physical construction, Applicant states Kondo’s separator is “an integrated material, not a coated article,” and “the physical arrangement of a surface coating versus a bulk-embedded mesh leads to different electrochemical behavior, mechanical properties, and manufacturability.” Applicant states the surface coating achieved by vapor deposition “forms a well-defined interface with the separator and can be engineered to impart specific surface properties (e.g., ionic conductivity, chemical stability, or interfacial compatibility) without fundamentally altering the bulk properties or structure of the separator itself.”
The instant claims are drawn to a product (a coated separator) and include a product-by-process limitation for applying a coating (“vapor deposition is used to put the coating on a separator surface”). The determination of patentability is based upon the structure itself, not its method of production or formation. If the product in the product-by-process claim 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). Kondo discloses the positively-recited limitations regarding the structure of the separator (“a battery separator coated with a coating”).
Applicant appears to argue criticality of the claimed vapor deposition coating method compared to Kondo’s methods of applying a coating to the substrate (immersion by pressure [0106-0108], stacking and lamination [0118-0121]). However, Applicant’s arguments regarding the presumed functional advantages only achieved by the claimed vapor deposition (“electrochemical behavior, mechanical properties, and manufacturability”) are not demonstrated, taught, or even contemplated by the instant disclosure. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) (see MPEP § 2113). Since the instant disclosure does not provide any evidence to support these arguments, criticality has not been proven. Additionally, Applicant’s argument regarding criticality based on how the claimed invention could be used in the future (“can be engineered to impart specific surface properties”) is speculative and not persuasive.
Regarding the secondary reference cited to teach vapor deposition as an alternative separator coating method (Zhang et al., US 20140045033 A1), Applicant states the combination of Kondo and Zhang is based on hindsight, and “a skilled artisan would have no motivation to depart from Kondo's deliberate design-where the mesh is fully embedded for mechanical strength-by instead applying a surface coating to a separator. Doing so would defeat the very purpose of Kondo's structure.”
Applicant’s argument is not persuasive. Kondo discloses using a press to surround the mesh by the solid electrolyte ([0106-0108]), but Kondo teaches at least one other method for applying the solid electrolyte to the mesh (stacking then lamination [0118-0121]). It is the Examiner’s position that using vapor deposition taught by Zhang to surround the separator of Kondo with a solid electrolyte would not change the principle of operation of the primary reference or render the reference inoperable for its intended purpose (i.e., as a coated separator for a battery) (see MPEP § 2113).
Applicant’s arguments conclude with an assertion of patentability of the claimed coating compounds not taught by Kondo (LiOxF, LiMgOxF, and AgILiMgO4S+).
Independent Claim 9 recites “a coating comprised of one from the group consisting of LiOxF, Silver Iodide, LiMgOxF, and AgILiMgO4S+” on lines 1-2. The claim is satisfied by selection of one of the claimed compounds. As discussed in previous actions, the instant disclosure does not support a coating comprising more than one of the claimed compounds. Regarding each of the compounds individually, see the Claim Rejections - 35 USC § 103 section in this action for the rejection of Claim 9 using silver iodide. See the Pertinent Prior Art section in this action for prior art that teaches the LiOxF, LiMgOxF, and AgILiMgO4S+ compounds recited by Claim 9.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9, 26, and 29-34 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al., US 20090081553 A1, and further in view of Zhang et al., US 20140045033 A1.
Regarding Claims 9 and 30, Kondo discloses a battery separator (solid electrolyte layer 5 of battery 1 includes an insulating mesh 120 [0105-0108, 0189-0190], Figs. 1B and 4) coated with a coating (silver-ion-conducting solid electrolyte layer/mixture material [0061-0095]; insulating mesh 120 is buried in electrolyte mixture material [0105-0108]) comprised of Silver Iodide (electrolyte particles of solid electrolyte layer can be AgI compounds [0086-0087]), the coating adjacent a cathode (cathode layer 3 [0190]; see position of solid electrolyte layer 5 and cathode layer 3 in Fig. 4).
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Kondo – Fig. 4
Regarding the limitation “vapor deposition is used to put the coating on a separator surface,” Kondo discloses the separator (120) can be immersed/buried in the solid electrolyte mixture material ([0107-0108]), but does not disclose vapor deposition as the method of applying the coating on the separator surface. However, coating a separator using vapor deposition is taught by Zhang.
Zhang teaches numerous methods of coating a separator membrane with a binder/particle mixture, including vapor deposition ([0020-0026]). Examiner notes Kondo and Zhang both disclose the coating comprises a binder/particle mixture (Kondo [0065-0080]; Zhang [0022-0025]) applied to both sides of the separator (Kondo [0107-0108]; Zhang [0026]); and the separator material is a porous polyolefin-based layer (Kondo [0108]; Zhang [0020-0021]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the current invention to coat both sides of the separator using vapor deposition, as taught by Zhang, in the battery separator of Kondo, and one would have a reasonable expectation of success for doing so, as Zhang teaches vapor deposition as an acceptable method to coat porous polyolefin-based separators with a binder/particle mixture.
Note: Claim 9 is considered a product-by-process claim. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus or structure itself. The patentability of a product or apparatus does not depend on its method of production or formation (see “vapor deposition is used to put the coating on a separator surface,” line 4 of the claim). If the product in the product-by-process claim 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding Claim 26, modified Kondo discloses all limitations as set forth above. Modified Kondo discloses the battery separator further comprises the coating adjacent to an anode (Kondo, anode layer 4 [0190]; see position of solid electrolyte layer 5 and anode layer 3 in Kondo Fig. 4; Claim 1 includes coating both sides of the separator).
Regarding Claims 29 and 31-34, modified Kondo discloses all limitations as set forth above. Modified Kondo discloses the coating comprises Silver Iodide (Kondo, AgI compounds [0086-0087]), and therefore is not required to meet the limitations of Claims 29 and 31-34.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
AgI and AgILiMgO4S+ compounds (Claims 9, 30 and 32): Heed et al., “Electrochemical Cells with Sulphate-based Solid Electrolytes,” Reactivity of Solids, Springer Publishing, (1977), pg. 713-718. https://doi.org/10.1007/978-1-4684-2340-2_103
Heed teaches a solid electrolyte comprising silver iodide (AgI, pg. 714,717), and also teaches a sulfate solid electrolyte comprising Ag, I, Li, and Mg (LiAg0.8Mg0.1I0.4(SO4)0.8 , see Table 1).
LiOxF and LiOF compounds (Claims 9, 29, and 33): Natsui et al., US 20180205073 A1
Natsui teaches a lithium composite oxyfluoride coating containing at least Li, O, and F ([0051]). Natsui teaches the lithium composite oxyfluoride contributes to high battery discharge capacity or high battery operating voltage due to the substitution of oxygen with fluorine ([0051-0053]).
LiMgOxF and LiMgO2F compounds (Claims 9, 31, and 34): Hao et al., US 20210367227 A1 (previously cited)
Hao teaches a lithium metal fluoro oxide coating formula LimMOxFy, wherein the coating is applied to the surface of a substrate in a battery ([0007, 0058, 0067-0069]). Hao teaches the claimed lithium metal fluoro oxide compositions LiMgOxF and LiMgO2F (M may be Mg [0067-0069]).
Conclusion
THIS ACTION IS MADE FINAL. 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 event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY C GARCIA whose telephone number is (571)272-2475. The examiner can normally be reached Mon-Fri, 0800 - 1730 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY C GARCIA/Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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