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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 06/17/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. IDS statements of previous office actions have already been considered.
Claim Status
Claims 73 and 100-101 have been amended; the amendments were minor editorial amendments.
Claims 1-16, 19-47, 49-72, 74-84, 92, and 95 have been cancelled.
Claims 17-18 and 48 have been withdrawn
Claim 102 been added, support is found in [0019] of the instant specification. No new matter has been added.
Claims 73, 85-91, 93-94, 96-102 are pending.
Claim Rejections - 35 USC § 103
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.
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.
Claims 73, 85-91, 93-94, and 96-102 are rejected under 35 U.S.C. 103 as being unpatentable over Albano et al. (US 2016/0351910 A1-as cited in the IDS) in view of Jung et al. (NPL Li3BO3-Li2CO3-as cited in the IDS) and Zhou et al. (US 2020/0185709 A1).
Regarding claim 73, Albano discloses an electrode for an electrochemical device, the electrode comprising:
electrode material particles (Figure 2; [0063] active material particles 10 for use in a cathode or anode); and
a nanoscale film on at least a portion of a surface of a porous structure of the electrode material particles (Figure 2; coating 20; [0084-0086] nano engineered coating that can be applied to the active material particles; [0089] selection of coating material is dependent upon surface it is applied to;[0116] non-exhaustive list may be B2O3 as well as lithium containing films and can be coated with atomic layer deposition, [0024]),
wherein the electrochemical device includes a liquid electrolyte ([0028-0029] embodiments can be both a liquid electrode or solid electrolyte),
wherein the electrode is an anode ([0063] negative electrode can be used as the electrode), and
the electrode particles are selected from the group consisting of graphite, carbon, silicon, silicon-carbon composites, lithium metal, and mixtures thereof ([0065] anode may include graphite; claim 74 graphite based active material particles),
wherein the electrochemical device is a lithium ion battery ([0152] can be used in lithium ion batteries),
wherein the coating is applied to the particles before forming a slurry and pasting to form an electrode ([0084]).
Albano discloses the coating layer as the nanoscale film, however, is silent with respect to the nanoscale film being made of Li3BO3-Li2CO3.
Jung discloses a buffering phase for solid state lithium ion batteries having a LBCO (Li3BO3-Li2CO3) coating layer and is analogous with the instant invention as being within the same field of endeavor as the instant application. Jung discloses wherein a LBCO coating significantly enhanced the electrochemical performances of capacity, rate capability and durability (abstract, Results and Discussion paragraphs 1-2).
Therefore, it would have been obvious in view of a skilled artisan to substitute the coating layer of Albano for the coating layer of Jung as a simple substitution of a coating layer made of similar materials for another to significantly enhance the electrochemical performances of the battery cell capacity, rate capability and durability as taught by Jung. The coating layers of Albano and Jung overlap in scope as both can be applied to an electrode/active material/solid electrolyte, thus it would have been obvious for a skilled artisan to substitute one coating layer for a battery cell for another with reasonable expectation of success and can still be applied according to the atomic layer deposition method of Albano as both are coating layers. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Modified Albano is silent with respect to the method of forming the porous structure wherein the material particles are exposed to a lithium containing precursor followed by an oxygen containing precursor to form a coating on the electrode material particles and calendaring the layer to form the porous structure with particle-particle contacts. This limitation is deemed to be a method of forming the porous structure and is deemed to be a product by process, by the resulting structure appears to be a coating layer applied onto the active material particles. The product-by-limitations of claims 73 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 73 as written does not distinguish the product of the instant application from the product of the prior art as the prior art Albano and Jung discloses a coating applied through an ALD method to particles of the active material while the instant application method results in a LBO-LCO film applied onto particles of the electrode material and thus the claim as written fails to differentiate from the prior art. Even if not, Zhou discloses wherein an active material can form a slurry and be applied to a substrate and calendered.
Zhou discloses a coating on a cathode material for improving safety and cycling ability of a battery and is analogous with the instant invention as being within the same field of endeavor of battery cells. Zhou disclose wherein an LBO covered cathode active material can be fabricated into cathode by forming a slurry, coating the slurry onto a substate, drying the slurry and compressing the coating by calendaring to form a LBO covered active material ([0054]).
Therefore, it would have been obvious in view of a skilled artisan that the coating and active material of modified Albano can be applied to the substrate as a slurry and further calendered to form an electrode as taught by Zhou. The resulting combination discloses wherein the LBCO film would be applied through calendering to a graphite anode of Albano which appears to be the same structure as applicant’s and applied through the same ALD method and thus would form the required structure of applicant’s method limitation that is read to be a product by process limitation. Because the thickness of the coating layer, method of applying the coating layer, and the materials for the coating layer (LBCO) and the anode (graphite) are the same as what is described in the instant application and the claims all the claim limitations of claim 73 are rendered obvious in view of the combination.
Regarding claim 85, modified Albano teaches all the claim limitations of claim 73. Jung further teaches wherein the film has a thickness of 0.1-50 nanometers (Jung Table 1- LBCO thickness 21.5-37 nm). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 91, modified Albano teaches all the claim limitations of claim 73. Albano further teaches a separator in contact with the anode; and a cathode in contact with an opposite side of the separator to form an electrochemical cell ([0066] Figure 3; battery contains a positive electrode, negative electrode and separator).
Regarding claim 93, modified Albano teaches all the claim limitations of claim 73. Albano further teaches wherein the electrode material particles comprise graphite ([0065] graphite can be used as the anode active material).
Regarding claims 86-90, 94 and 96, modified Albano teaches all the claim limitations of claim 73. Jung teaches a LBCO coating that can be applied to the active material of Albano, however, is silent with respect to properties of the film such as the ionic conductivity, ionic transference number, redox potential, wettability, and total area specific resistance. The claimed properties appear to be based on the material and method of forming the film. Applicant uses a LBCO film applied to a graphite anode through atomic layer deposition and would appear to exhibit these properties as claimed by the applicant (See applicant’s instant specification [104-106] and [0046]). Examiner notes the modification of claim 73, as Albano’s coating layer 111 is substituted for the LBCO film of Jung both formed through a deposition process.
Therefore, through the modification of claim 73, the coating layer of Albano is substituted for the LBCO film of Jung and is recognized by Jung for displaying superior electrochemical properties. The substitution for an explicit combination of LBCO applied through atomic layer deposition would render obvious the claim properties of ionic conductivity (claim 86), ionic transference number (claim 87), stability at a Li+Li0 redox potential (claim 88), wettability (claim 89), solid electrolyte interphase (claim 90), and total area specific resistance (claim 94) as these properties appear to be attributed to using an LBCO film. Additionally, through the combination the LBCO film would be applied to a graphite anode of Albano which appears to be the same structure as applicant’s and through the same ALD method. Because the thickness of the coating layer, method of applying the coating layer, and the materials for the coating layer (LBCO) and the anode (graphite) are the same as what is described in the instant application and claims, the claim properties of claims 86-90, and 94 are rendered obvious in view of Albano and Jung. Regarding claim 96, the limitation “is formed by exposing the electrode material particles to a lithium containing precursor followed by an oxygen containing precursor and then further exposing to a boron containing precursor followed by the oxygen containing precursor to form the coating on the electrode material particles, forming a slurry comprising the coated electrode material particles, casting the slurry on a surface to form a layer, and calendering the layer to form the porous substrate” is a product by process limitation. Also see the rejection of claim 73 as Zhou discloses wherein a slurry can be formed and calendered onto the substrate to form an electrode with a coating layer applied onto the active material and thus this limitation is rendered obvious through the modification of claim 73.
The product-by-limitations of claim 96 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 96 as written does not distinguish the product of the instant application from the product of the prior art as the prior art Albano, Jung and Zhou discloses a coating applied through an ALD method that includes calendering the active material particles and coating onto the substrate.
Regarding claim 97, modified Albano discloses all the claim limitations of claim 73. Jung further discloses wherein the film has a thickness of 20-1000 nanometers (Jung Table 1- LBCO thickness 21.5-37 nm). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 98-99, the limitations “wherein the film eliminates nature solid electrolyte interphase formation during preconditioning at a charge rate of C/10 for a first cycle and wherein the film alleviates a need for preconditioning during manufacturing of the lithium ion battery” is considered a product by process/intended use and is not given patentable weight. Claim 98 is dependent upon the use of the electrode and thus is not given patentable weight as no additional structural features is being claimed other than an absence of a solid electrolyte interphase during a preconditioning step, which is deemed to be a product by process claim. Claim 99 also is not given patentable weight as the claim does not contain any additional structural features for the product claim. Thus claims 98-99 are not given patentable weight as the limitations do not further limit the product claim of claim 97. The product-by-limitations of claims 98-99 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324).
Regarding claim 100, modified Albano discloses all the claim limitations of claim 73. Albano further discloses wherein the electrode material particles are selected from the group consisting of graphite, carbon, silicon, silicon-carbon composites, lithium metal, and mixtures thereof ([0065] anode may include graphite; claim 74 graphite based active material particles).
Regarding claim 101, Albano discloses an electrode for an electrochemical device, the electrode comprising:
electrode material particles (Figure 2; [0063] active material particles 10 for use in a cathode or anode); and
a nanoscale film on at least a portion of a surface of a porous structure of the electrode material particles (Figure 2; coating 20; [0084-0086] nano engineered coating that can be applied to the active material particles; [0089] selection of coating material is dependent upon surface it is applied to;[0116] non-exhaustive list may be B2O3 as well as lithium containing films),
wherein the electrochemical device includes a liquid electrolyte ([0028-0029] embodiments can be both a liquid electrode or solid electrolyte),
wherein the electrode is an anode ([0063] negative electrode can be used as the electrode), and
the electrode particles are selected from the group consisting of graphite, carbon, silicon, silicon-carbon composites, lithium metal, and mixtures thereof ([0065] anode may include graphite; claim 74 graphite based active material particles),
wherein the electrochemical device is a lithium ion battery ([0152] can be used in lithium ion batteries),
wherein the coating is applied to the particles before forming a slurry and pasting to form an electrode ([0084]).
Albano discloses the coating layer as the nanoscale film, however, is silent with respect to the nanoscale film being made of Li3BO3-Li2CO3.
Jung discloses a buffering phase for solid state lithium ion batteries having a LBCO (Li3BO3-Li2CO3) coating layer and is analogous with the instant invention as being within the same field of endeavor as the instant application. Jung discloses wherein a LBCO coating significantly enhanced the electrochemical performances of capacity, rate capability and durability (abstract, Results and Discussion paragraphs 1-2).
Therefore, it would have been obvious in view of a skilled artisan to substitute the coating layer of Albano for the coating layer of Jung as a simple substitution of a coating layer made of similar materials for another to significantly enhance the electrochemical performances of the battery cell capacity, rate capability and durability as taught by Jung. The coating layers of Albano and Jung overlap in scope as both can be applied to an electrode/active material/solid electrolyte, thus it would have been obvious for a skilled artisan to substitute one coating layer for a battery cell for another with reasonable expectation of success and can still be applied according to the atomic layer deposition method of Albano as both are coating layers. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Modified Albano is silent with respect to the method of forming the porous structure wherein the material particles are calendered to form the porous structure with particle-particle contacts. This limitation is deemed to be a method of forming the porous structure and is deemed to be a product by process, by the resulting structure appears to be a coating layer applied onto the active material particles. The product-by-limitations of claims 101 are not given patentable weight since the courts have held that patentability is based on a product itself, even if the prior art product is made by a different process (In re Thorpe, 227 USPQ 964, 1985). Moreover, a product-by-process limitation is held to be obvious if the product is similar to a prior art product (In re Brown, 173 USPQ 685, and In re Fessman, 180 USPQ 324). Claim 101 as written does not distinguish the product of the instant application from the product of the prior art as the prior art Albano and Jung discloses a coating applied through an ALD method to particles of the active material while the instant application method results in a LBO-LCO film applied onto particles of the electrode material and thus the claim as written fails to differentiate from the prior art. Even if not, Zhou discloses wherein an active material can form a slurry and be applied to a substrate and calendered.
Zhou discloses a coating on a cathode material for improving safety and cycling ability of a battery and is analogous with the instant invention as being within the same field of endeavor of battery cells. Zhou disclose wherein an LBO covered cathode active material can be fabricated into cathode by forming a slurry, coating the slurry onto a substate, drying the slurry and compressing the coating by calendaring to form a LBO covered active material ([0054]).
Therefore, it would have been obvious in view of a skilled artisan that the coating and active material of modified Albano can be applied to the substrate as a slurry and further calendered to form an electrode as taught by Zhou. The resulting combination discloses wherein the LBCO film would be applied through calendering to a graphite anode of Albano which appears to be the same structure as applicant’s and applied through the same ALD method and thus would form the required structure of applicant’s method limitation that is read to be a product by process limitation. Because the thickness of the coating layer, method of applying the coating layer, and the materials for the coating layer (LBCO) and the anode (graphite) are the same as what is described in the instant application and the claims all the claim limitations of claim 101 are rendered obvious in view of the combination.
Regarding claim 102, modified Albano discloses all the claim limitations of claim 73. Albano discloses wherein the lithium containing precursor is in a gaseous state ([0146, 0131-0132] nanoscale film is provided and deposited by atomic layer deposition in which a gas state is used as well as other forms of coating can also be used such as electron beam deposition and vacuum deposition to apply the nano film). Thus the ALD method used forms a film through a gaseous state method and thus all the claim limitations of claim 102 are rendered obvious through the combination.
Response to Arguments
Applicant's arguments filed 06/17/2026 have been fully considered but they are not persuasive. Applicant argues that the amended claims overcome the rejection of record.
Applicant argues that there is clear evidence of an expectation that a combination of Albano and Jung would not have worked for the intended purpose of creating a film comprising Li3BO3-Li2CO3 on the electrode material particles as in the absence of Li2CO3 or LiOH impurities LBCO will not be formed by the method of Jung. This argument is noted, however, is not found to be persuasive as the rejection is not relying upon the method of Jung to from the LBCO coating rather substitutes the nanocoating of Albano for the LBCO coating of Jung that teaches a significantly enhanced electrochemical performances of the battery cell. Applicant fails to point out the “clear evidence of an expectation that the combination would not have worked for the intended purpose”. Thus applicant is arguing a method of Jung that is not relied upon in the rejection and thus is not found to be persuasive.
Zhou uses a wet coating process for LBO and thus also has clear evidence of an expectation that a combination of Albano and Shou would not have worked for the intended purpose of creating a film. This argument is not persuasive as the method of forming is not given patentable weight as the method limitations are considered to be product by process limitations as the product claim does not depend upon the method of making rather the final structure. Zhou is used to disclose a similar material being made and applied to the electrode through conventionally known method of forming a slurry and calendaring to form an electrode. Applicant fails to point out the “clear evidence of an expectation that the combination would not have worked for the intended purpose”. Thus applicant is not found to be persuasive.
Applicant’s arguments are not persuasive as applicant fails to show how the references are not compatible with one another in view of the rejection of record and thus is not found to be persuasive. Examiner further notes that the applicant is arguing the references individually and not what is being relied upon in the rejection. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Senoue (US 2019/0334178 A1)- discloses an all solid state battery having a formula for a solid electrolyte that can contain Li3BO3 and Li2CO3 as well as other compounds. Senoue is analogous with the instant invention as being related to the material of the nanoscale film, however, is directed to an electrolyte rather than a portion covering electrode material particles.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Adam J Francis whose telephone number is (571)272-1021. The examiner can normally be reached M-Th: 7 am-4 pm EST.
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/ADAM J FRANCIS/Primary Examiner, Art Unit 1728
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