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 .
Remarks
Claim 1 has been amended. Claim 17 is newly presented. Claims 2-16 are as previously presented.
Status of objections and rejections
The rejection below has been modified as necessitated by the applicant’s amendments.
Claim Objections
Claims 1, 10-12 and 16 are objected to because of the following informalities: Claim 1 line 8 recites a “long tape” however, claims 1 (lines 10-12), 10-12 (line 2 of each claim) and 16 (line 1) recite a “tape”. It is clear “the tape” refers to “a long tape” in claim 1, line 8 however for the purposes of consistency the examiner suggests amending all to remove the term “long”. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1, 9-14, and 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, and 7 of U.S. Patent No. US11710834B2 (herein referred to as ‘834). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1 and 17 both the instant application and claim 1 of ‘834 claim a lithium primary battery, comprising: a battery case; an electrode group housed in the battery case; and a non-aqueous electrolyte, the non-aqueous electrolyte containing a non-aqueous solvent, a solute, and an additive, the electrode group including a positive electrode, a negative electrode, and a separator interposed between the positive electrode and the negative electrode, the negative electrode including a metal lithium or lithium alloy foil, and having a shape having a longitudinal direction and a lateral direction, with a long tape attached to at least one principal surface of the foil along the longitudinal direction, the tape including a resin base material (polyolefin, claim 1) and an adhesive layer (rubber component, silicone component, and an acrylic resin component, claim 17).
Minor differences include:
The instant application claiming a width of the tape to be 0.5-2 mm. While ‘834 claims a tape with a width of 0.5-3 mm.
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 (see MPEP 2144.05).
The instant application claiming the additive is a phosphorous compound with having a formula of POn where n = 3 or 4. While ‘834 claims an additive LixMCyOzF60 (the examiner notes that the published equation, specifically “F60” does not make sense for a chemical formula. But considering that 0≤α≤6 is listed below but the variable α is not found in the published equation, the examiner is under the assumption that “F60” is a typo and should read “Fα”, as noted in col. 2 line 61-67). Where in the formula (1), 1≤x≤2, 0≤y≤6, 0≤z≤8, 0≤α≤6, and 1≤y+z+α are satisfied, y and z are not simultaneously 0, and the element M includes at least one of phosphorus and boron, wherein the additive includes at least one selected from the group consisting of LiPO2F2 and LiBC2O4F2,
The examiner notes that an additive with a phosphorus compound with a formula of POn where n= 3 or 4 may still satisfy the equation of ‘834 when M = phosphorous, y = 0, and z = 3.
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 (see MPEP 2144.05).
Regarding claim 9, both the instant application and claim 3 of ‘834 claim the lithium primary battery according to claim 1, wherein a content of the phosphorus compound in the non-aqueous electrolyte is less than 1.0 mol/L.
Minor differences include the lower bounds of the instant application being 0.002 mol/L while the lower bound of ‘834 is 0.01 mol/L
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 (see MPEP 2144.05).
Regarding claim 10, both the instant application and claim 1 of ‘834 include the resin base material of the tape includes a polyolefin.
Regarding claim 11, both the instant application and claim 1 of ‘834 include the adhesive layer of the tape includes at least one selected from the group consisting of a rubber component, a silicone component, and an acrylic resin component.
Regarding claim 12, both the instant application and claim 4 of ‘834 include the adhesive layer wherein a ratio: St/Sn multiplied by 100% of an area St of the tape to an area S~ of the negative electrode is 0.5% or more and 4% or less.
Regarding claim 13, both the instant application and claim 5 of ‘834 include the non- aqueous electrolyte contains at least one kind of a solvent having a viscosity of 1 mPa-s or less at 25 °C.
Regarding claim 14, both the instant application and claim 7 of ‘834 include wherein the solvent includes dimethoxyethane.
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.
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.
Claim(s) 1-12, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sugioka (US 20180309139 A1) and in view of Hara (JPS61281466A; as filed in the IDS on 9/16/21) and Kobayashi (US20110217589A1).
Regarding claim 1 and 17, Sugioka discloses a lithium primary battery [abstract, Sugioka], comprising: a battery case [fig. 1 (5), Sugioka]; an electrode group housed in the battery case [fig. 1, Sugioka]; and a non-aqueous electrolyte [abstract, Sugioka], the non-aqueous electrolyte containing a non-aqueous solvent [0038, Sugioka], a solute [0035, Sugioka], and an additive [0029-0033, Sugioka], the electrode group including a positive electrode [abstract, Sugioka], a negative electrode [abstract, Sugioka], and a separator interposed between the positive electrode and the negative electrode [0093, Sugioka], the negative electrode including a metal lithium or lithium alloy foil [0067-0069, Sugioka], and having a shape having a longitudinal direction and a lateral direction (a foil is three-dimensional and inherently has a longitudinal and lateral direction), the additive including a phosphorus compound having a POn structure having a phosphorus atom and an oxygen atoms bonded to the phosphorus atom, where n = 3 or 4 [0033, Sugioka e.g. tris(trimethylsilyl)phosphate, mono(trimethylsilyl)phosphate, etc. ].
Sugioka is silent to 1) a long/elongated tape attached to at least one principal surface of the foil along a longitudinal direction. 2) the composition of the adhesive tape.
In regards to 1), Hara discloses a long tape (6) attached to at least one principal surface of a negative electrode plate along the longitudinal direction [abstract, description (means for solving a problem), fig. 1, Hara describes the use of an electric insulating band layer (6) is applied to the surface of the electrode plate by sticking an adhesive tape or the like there on. The examiner is interpreting this insulating band layer to be equivalent to a “long tape”], the tape including a resin base material and an adhesive layer [abstract, description (example, ¶2 line 4-6), Hara discloses that the insulating band may be an adhesive tape and in an example discloses a resin liquid applied to the surface and dried. Because this resin liquid adheres to the surface of the electrode plate, the examiner is interpreting this to be equivalent to a resin base material and an adhesive layer.], the tape being elongated in the longitudinal direction of the negative electrode [abstract, fig. 1 Hara].
Hara further discloses that the use of the insulating band is such that it reinforces the mechanical strength of the plate to suppress the displacement of the plate at the end of the winding to prevent a decrease in the capacity of discharging [abstract, Hara]. However, because the portion covered by the insulating band layer remains undischarged it is necessary to design the insulating band layer to be narrow [description, (example ¶2 line 6-8), Hara].
Hara’s description of the insulating band layer (“long tape”) is such that including this adhesive layer can be used to prevent displacement of the plate and prevent a decrease in discharge capacity. However, the use of this adhesive layer results in the formation of a region that is covered by the layer to remain undischarged. As such, there exists a balance where including an adhesive layer prevents a reducing in discharge capacity, but if the layer is too large then a large undischarged region presents itself. Therefore, one of ordinary skill in the art prior to the effective filing date would appreciate that this undischarged region will result in a decrease in discharge capacity and that the width of the “long tape” is a result effective variable, see MPEP 2144.05.II.
Prior to the effective filing date, one of ordinary skill within the arts will find it obvious to modify Sugioka such that 1) the negative electrode contained an insulating band layer (“long tape”) made of adhesive and a resin material that covered a portion along the longitudinal axis of the electrode. 2) the width of the adhesive layer was between 0.5 mm to 2 mm in order to provide an adhesive strip that can provide mechanical strength the negative electrode thereby preventing a decrease in capacity discharge without creating too large of an undischarged region which would then increase the discharge capacity [abstract, description, (example ¶2 line 6-8), Hara].
In regards to 2) Kobayashi discloses the use of an adhesive member (17, “tape”) fixed to an electrode assembly within a battery case [0024-0025, 0042, fig. 2, Kobayashi]. The adhesive member contains a base material (17A, “resin base material”) and an adhesive layer (17B) [0025, fig. 1, Kobayashi].
In regards to claim 1, the (resin) base material includes fluorocarbon resin, polyimide, polyethylene (“polyolefin”), and polyethylene terephthalate [0031-0032, Kobayashi].
In regards to claim 17, the adhesive layer includes rubber components, silicon components, and acrylic components [0037, Kobayashi].
Prior to the effective filing date, one of ordinary skill within the arts would find it obvious to further modify Sugioka such that the tape includes a resin base material comprised at least one of a fluorocarbon, polyimide, polyolefin, and/or polyethylene terephthalate (claim 1). As these are known high-swelling and high-melting-point having resistance to electrolytic solutions [0031, Kobayashi]. One would further find it obvious for the adhesive layer to include one of a rubber component, silicon component and/or acrylic component (claim 17). These adhesives are known to provide bonding to the base material and the electrode material [0036, Kobayashi].
Regarding claim 2, Sugioka as modified above discloses the lithium primary battery, wherein the phosphorus compound further contains a silicon atom bonded to at least one of the oxygen atoms [0033, e.g. tris(trimethylsilyl)phosphate, diphenyl(trimethylsilyl)phosphate, etc.].
Regarding claim 3, Sugioka as modified above disclose the lithium primary battery, wherein the phosphorus compound is at least one selected from the group consisting of phosphoric acid, phosphorous acid, a phosphate ester, a phosphite ester, a silyl phosphate ester, and a silyl phosphite ester [0033, silyl phosphate ester].
Regarding claim 4, The lithium primary battery according to claim 3, wherein the phosphorus compound is at least one selected from the group consisting of a first compound represented by a formula (1):
PNG
media_image1.png
158
197
media_image1.png
Greyscale
a second compound represented by a formula (2):
PNG
media_image2.png
106
105
media_image2.png
Greyscale
a third compound represented by a formula (3):
PNG
media_image3.png
162
292
media_image3.png
Greyscale
, and a fourth compound represented by a formula (4):
PNG
media_image4.png
145
244
media_image4.png
Greyscale
in the formulas (1) to (4), each of R1 to R24 is independently a hydrogen atom, a saturated aliphatic group [0033, e.g. tris(trimethylsilyl) phosphate, etc.], an unsaturated aliphatic group [0033, e.g. tris(vinyldimethylsilyl) phosphate], or an aromatic group [0033, tris(triphenylsilyl) phosphate], and at least one hydrogen atom in each of the saturated aliphatic group, the unsaturated aliphatic group, and the aromatic group may be substituted by a fluorine atom [0028].
Regarding claim 5, Sugioka as modified above discloses the lithium primary battery, wherein in the formulas (1) to (4), R1 to R24 all represent a saturated aliphatic group [0033, e.g. tris(trimethylsilyl) phosphate].
Regarding claim 6, Sugioka as modified above discloses the lithium primary battery, wherein in the formula (1), R1 to R3 all represent the same group, in the formula (2), R4 to R6 all represent the same group, in the formula (3), R7 to R15 all represent the same group [0033, e.g. tris(trimethylsilyl) phosphate].
Regarding claim 7, Sugioka as modified above discloses the lithium primary battery, wherein in the formulas (1) to (4), R1 to R24 all represent a methyl group [0033, tris(trimethylsilyl) phosphate].
Regarding claim 8, Sugioka as modified above discloses the lithium primary battery, wherein the phosphorus compound is tris(trimethylsilyl) phosphate (O=P(O-Si(CH3)3)3) and/or tris(trimethylsilyl) phosphite (P(O-Si(CH3)3)3) [0033].
Regarding claim 9, Sugioka as modified above discloses the lithium primary battery, wherein a content of the phosphorus compound in the non-aqueous electrolyte is 0.002 mol/L or more and 1.0 mol/L or less ([0034, 0116] Sugioka discloses an overlapping range of phosphorous compound in the non-aqueous solution to be between 0.1 mass% to 7 mass %. In the embodiments [0116], the LiBF4 concentration is 1 mol/L or 93.75 g/L. The solvent propylene carbonate (density = 1.2 g/mL) and methylethyl carbonate (density = 1.07 g/mL) are present in a 50:50 mass ratio. The mass of 1 L of propylene carbonate and methylethyl carbonate in a 50:50 mass ratio is 1135 g. The total weight of the solvent and salt is ~1230 g. Tris(trimethylsilyl)phosphate (mw = 314.54 g/mol) is present in 2 mass% or ~25 g (~ 0.08 mol). Therefor the concentration of the phosphate in the solution is 0.08 mol/L, which overlaps with the applicant’s range (see MPEP 2144.05)).
Regarding claim 10, Sugioka as modified above discloses the base material of the tape including a polyolefin[0032, Kobayashi].
Regarding claim 11, Sugioka as modified above discloses the adhesive layer of the tape includes at least one selected from the group consisting of a rubber component, silicone component, and an acrylic resin component [0037, Kobayashi].
Regarding claim 12, Sugioka as modified above is silent to the lithium primary battery, wherein a ratio: St/Sn multiplied by 100% of an area St of the tape to an area Sn of the negative electrode is 0.5% or more and 4% or less.
However, the claim of using tape on the negative electrode such that the ratio of the area of the tape to the area of the electrode is a result-effective variable (see MPEP 2144.05.II).
As discussed above in the rejection of claim 1, Hara discloses that the use of an insulating band layer (“long tape”) can be used to prevent a decrease in the discharging capacity of the negative electrode but the insulating band layer should be narrow such that it does not create a large undischarged region.
Prior to the effective filing date, one of ordinary skill within the art would know that when applying tape to a negative electrode if the tape is too thin then it will not be effective as it will not be able to effectively perform its intended purpose (for instance improving the mechanical strength of the winding end portions) and as such will have a weakened use. If the tape is too large, the cost of production increases unnecessarily and increases the amount of inert components present on the electroactive material and within the battery, which will result in an increase in an undischarged region. As such, it would have been obvious to one of ordinary skill within the art at the time of effective filing date of the invention to use an adhesive tape such that the ratio of the area of the tape to the area of the negative electrode is appropriate so that it performs its intended purpose but not so large that it raises production costs and uses an excess of inert materials (see MPEP 2144.05.II).
Regarding claim 16, Sugioka as modified above discloses the lithium primary battery, wherein the tape extends across an entire length of the one principal surface of the foil in the longitudinal direction [abstract, fig. 1, Hara discloses and depicts the insulating band layer (“long tape”) extending along the winding direction such that it suppresses displacement at the end of the winding].
Claim(s) 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over modified Sugioka as applied to claim 1 above, and further in view of Tokuda (US 20150380772 A1).
Regarding claim 13, modified Sugioka is silent to the viscosity of the non-aqueous electrolyte.
However, Tokuda discloses the lithium primary battery, wherein the non-aqueous electrolyte contains at least one kind of a solvent having a viscosity of 1 mPa-s or less at 25 0C [0665-0681, Tokuda discloses that the viscosity should be lower than 1.5 mPa-s, which anticipates the applicant’s range].
Prior to the effective filing date, one of ordinary skill within the arts would be motivated to further modify Sugioka’s battery to ensure that the electrolytic solution has a viscosity of lower than 1.5 mPa-s as the concentration of the non-aqueous solvent increases so too does the viscosity of the solution [0066]. As the concentration/viscosity increases there is a reduction in permittivity which results in a decrease in electrical conductivity and can have a reduction heavy-current discharge characteristics [0675].
Regarding claim 14, modified Sugioka discloses the lithium primary battery according to claim 13, wherein the solvent includes dimethoxyethane ([0038, Sugioka], [0672, Tokuda]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over modified Sugioka as applied to claim 1 above, and further in view of Kawaguchi (JP 2006236889 A).
Regarding claim 15, modified Sugioka is silent to the use of phthalimide in their non-aqueous electrolyte.
However, Kawaguchi discloses the use of phthalimide in a non-aqueous electrolyte [abstract].
Prior to the effective filing date, one of ordinary skill within the arts would be motivated to further modify Sugioka’s non-aqueous electrolyte to further include phthalimide as this can help protect the electrode by increasing battery impedance after a partial discharge and providing a protective layer around the positive electrode [0008-0010].
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive. See below for further details.
The examiner maintains the double patenting rejection as ‘834 includes the claim limitation of a resin based material including polyolefin.
Pages 2-3 of applicant’s response summarizes claim 1.
Starting at the bottom of page 3 to the top of page 6 are applicant’s arguments in regards to the use of Fujiwara. However, in light of the applicant’s amendments the examiner has introduced Kobayashi. As such applicant’s arguments for Fujiwara are moot.
The middle of page 6 only presents arguments for the allowability of claims 13-15 based off of the alleged allowability of claim 1.
Newly added claim 17 is rejected as noted above.
No further arguments are, the examiner maintains their rejection.
Conclusion
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 QUINTIN DALE ELLIOTT whose telephone number is (703)756-5423. The examiner can normally be reached M-F 8:30-6pm (MST).
Examiner interviews 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 USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached on 5712705256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/QUINTIN D. ELLIOTT/Examiner, Art Unit 1724 /MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724