DETAILED ACTION
Application 17/591246, “CYCLE LIFE IN SI/LI BATTERIES USING HIGH TEMPERATURE DEEP DISCHARGE CYCLING”, was filed with the USPTO on 2/2/2022.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action on the merits is in response to communication filed on 9/30/25.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 9/30/25 has been entered.
Response to Arguments
Applicant’s arguments filed on 9/30/25 have been fully considered and are persuasive.
Applicant argues that the presently filed claim 1 overcomes the previously presented rejection based on Hao (US 2020/0067129) for the reasons given in PTAB 9/18/25 decision with respect to previously filed claim 5 (now written into independent claim 1).
This argument is persuasive, and the rejection based on Hao has been withdrawn. However, in view of an updated search, a new ground(s) of rejection has been presented herein.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 1-2, 4, 6-10 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Hall (US 2005/0172875) and Zaghib (US 2016/0149212).
Regarding claim 1, 2, Hall teaches a method of configuring battery performance (“prolonging the life of batteries” as in title and “reconditioning a lithium ion battery” as in paragraph [0019] are performance related), the method comprising:
providing a cell comprising a cathode, a separator, and an anode (Fig. 1; paragraph [0019]); and applying to the cell one or more deep discharge cycles (paragraph [0011-0012] describes performing a special charge cycle, different from “normal operation”, with modified voltage range and rate in order to “completely extract all lithium from the negative electrode”, found to be a deep discharge cycle; see also “voltage was set below the normal discharge voltage” at paragraph [0027]), wherein:
each of the one or more deep discharge cycles comprises at least charging and discharging the cell (“completely discharged…recharge”, paragraph [0011];
the cell comprises a lithium-ion cell (“lithium ion battery”, paragraph [0011]), and wherein the one or more deep discharge cycles are configured to activate trapped or hard to remove Li in the anode by modifying at least one charging or discharging related condition or parameter (“discharge rate is also sufficiently low to completely extract all lithium from the negative electrode”, paragraph [0011]);
in at least one deep discharge cycle of the one or more deep discharge cycles, performing one or both of charging and discharging of the cell at a higher temperature that is above a normal operating temperature range applicable to a same one of charging and/or discharging of the cell during normal operations of the cell (“raising the temperature above its nominal value”, paragraph [0027]); and
each of the one or more deep discharge cycles comprises using a discharge cutoff voltage that is below a normal operating voltage range of the cell (“voltage was set below the normal discharge voltage”, paragraph [0027]).
Hall does not appear to teach wherein the anode is a silicon dominant anode comprising silicon as >50% of the anode active material.
In the battery art, Zahgib teaches that silicon or silicon-based anodes provide significantly higher capacity compared to carbon based anodes (paragraph [0004]; see also “powder of silicon” at paragraph [0101] suggesting 100% silicon embodiments).
It would have been obvious to a person having ordinary skill in the art at the time of invention to modify Hall by utilizing a silicon dominant anode, comprising silicon as >50% of the anode active material, for the benefit of increasing the capacity of the anode as taught by Zaghib.
Regarding claim 4, the cited art remains as applied to claim 1. Zaghib further teaches wherein the higher temperature is 40° C or higher, 45° C or higher, or around 45° C (“40° C”, paragraph [0027]).
Regarding claim 6, the cited art remains as applied to claim 1. Zaghib further teaches wherein each of the one or more deep discharge cycles comprises using a discharge cutoff voltage is 2.5V or less, 2V or less, or 1.5V or less (discharge at “2.0 volts” is suggested as suitable, if not preferable, at paragraph [0025]).
Regarding claim 7, the cited art remains as applied to claim 1. Zaghib further teaches further comprising using, during at least one deep discharge cycle, one or both of: a first charge rate that is different from a second charge rate used during normal operations of the cell, and a first discharge rate that is different from a second discharge rate used during normal operations of the cell (paragraphs [0011, 0025]).
Regarding claim 8-10, the cited art remains as applied to claim 1. Zaghib further teaches the method further comprising using a constant voltage hold during at least part of a discharge step of at least one of the one or more deep discharge cycles, wherein the voltage hold is at a voltage below a normal operating voltage of the cell (“slowly discharged at a predetermined voltage”, abstract, paragraph [0011]).
The requirement that the hold is around 2.5, 2.0 or 1.5 V is obvious in view of Zaghib’s suggestion that the predetermined voltage may be “typically greater than about 2.0 volts and preferably greater than about 2.7 volts” at paragraph [0025], particularly considering the breadth afforded by the word “around” of the claimed invention.
The requirement that the cutoff current used in conjunction with the hold is around 0.1C, 0.05 or 0.02C are found to be obvious in view of Zaghib’s suggestion of using various C/n values at a matter of design choice depending on battery materials at paragraphs [0026-0027], noting that the expressly disclosed values C/8 [0.125C] and C/64 [0.0156C] round to the claimed values when one significant digit is used, particularly considering the breadth afforded by the word “around” of the claimed invention.
Regarding claim 17, the cited art remains as applied to claim 1. Zaghib further teaches wherein the at least one charging or discharging related condition or parameter comprises temperature (paragraph [0027]).
Regarding claim 18, the cited art remains as applied to claim 1. Zaghib further teaches wherein the at least one charging or discharging related condition or parameter uses different temperatures at different steps (paragraph [0027] teaches raising the temperature of 20° C to 40° C, noting that the “steps” of claim 18 are not limited).
Regarding claim 19-20, the cited art remains as applied to claim 1. Zaghib further teaches wherein the at least one charging or discharging related condition or parameter comprises a parameter related to voltage, voltage limits and/or rate of charge (paragraph [0011, 0027]).
Claims 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Hall (US 2005/0172875), Zaghib (US 2016/0149212) and Billy (US 2023/0378554).
Regarding claim 3, the cited art remains as applied to claim 1. Hall teaches a method of reconditioning a lithium battery (abstract) that may utilize a deep discharge cycle (see rejection of claim 1) to return the used battery to a like-new state (Fig. 1; paragraph [0024]).
As a preferred embodiment, Hall teaches that the method is used to recondition a battery in-situ (e.g. paragraph [0006]) but does not appear to teach the method comprising applying at least one of the one or more deep discharge cycles during formation of the cell.
In the battery art, Billy teaches that due to the number of used and deteriorated lithium batteries, recycling of the batteries has become a major issue (paragraph [0006]). Billy further teaches conventional battery recycling techniques may require a grinding step which maybe undesirable or dangerous (paragraph [0012]).
It would have been obvious to a person having ordinary skill in the art to modify the method of Hall by taking a used battery, and then creating a recycled battery therefrom, for the benefit of solving a recycling problem known in the art, in view of Billy, that cost-effectively produces a recycled battery. In this case, the applying to the cell one or more deep discharge cycles, is a formation process applied to the cell, since the recycled battery may be considered a new product made from the used battery by reforming the cell using the formation process.
Claims 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Hall (US 2005/0172875), Zaghib (US 2016/0149212) and Decker (US 2015/0367747).
Regarding claim 14-16, the cited art remains as applied to claim 1. Hall teaches a method comprising a deep discharge cycle, but does not appear to teach the method comprising configuring the deep discharge cycle using a battery management system, wherein the battery management system is integrated with the cell, or wherein the battery management system is external to the cell.
In the battery art, Hall teaches a battery revitalizing method comprising controlling the method using a battery management system, wherein the battery management system is integrated with the cell, and wherein the battery management system is external to the cell (Fig. 2; paragraph [0004, 0020, 0027]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to modify the method of Hall by incorporating a battery management system, wherein the battery management system is integrated with the cell, and wherein the battery management system is external to the cell, as taught by Decker, for the benefit of automating and/or facilitating the deep discharge steps required by Hall with a controllers accuracy and convenience.
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.
Claims 1, 2, 4, 6-10 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 17/231788 (hereinafter ‘788). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are obvious over those of ‘788.
More specifically, all the features of instant claim 1 are claimed by ‘788 (see ‘788 claim 1 for the general teaching of the structure of a cell and configuring battery performance using deep discharge cycles which have a modified charging condition compared to normal-use cycles, claims 5-7 for the low discharge cutoff voltage, claims 8-9 for the charging or discharging at a higher temperature), except that ‘788 does not claim that the deep discharge cycles are configured to activate trapped or hard to remove Li in the anode.
However, the “wherein the one or more deep discharge cycles are configured to activate trapped or hard to remove Li in the anode by modifying at least one charging or discharging related condition or parameter” limitation describes an intended result of the deep discharge cycle. As described in MPEP 2111.04, a “‘[wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited’”. Here, the deep discharge step of ‘788 is substantially the same as that claimed, and the wherein limitation does not add any specific limitation to the actually performed method step. Thus, the inclusion of this step does not patentably distinguish the instant invention from that of ‘788
Regarding claim 2, the silicon content is obvious over ‘788 claim 1 (implied by “silicon-dominant”).
Regarding claim 4, the temperature is obvious over ‘788 for having the same or similar to claims 8-9.
Regarding claim 6, the discharge cutoff voltage is obvious over ‘788 for having the same or similar to claims 5-7.
Regarding claim 7, the use of different charge or discharge rate is obvious over ‘788 for having the same or similar to claims 2, 3.
Regarding claim 8, the constant voltage hold is obvious over ‘788 claims 1 (“held at a particular cutoff voltage”).
Regarding claim 9, the voltage values are obvious over ‘788 claims for having the same or similar to 5, 6.
Regarding claim 10, the charging rates are obvious over ‘788 for having the same or similar to claims 3.
Regarding claims 14-16, the battery management system is obvious over ‘788 for having the same or similar to claims 10-12.
Regarding claims 17 and 18, the temperature limitations are obvious over ‘788 for having the same or similar to claims 8-9.
Regarding claims 19-20, the condition or parameter type is obvious over ‘788 claim 1 where the parameter includes at least voltage.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH R SMITH whose telephone number is (571)270-7005. The examiner can normally be reached Mon-Fri: 9 AM-5 PM (EST).
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/JEREMIAH R SMITH/Primary Examiner, Art Unit 1723