DETAILED ACTION
Response to Amendment
Claims 1, 3-9, 12-17, 20, and 21 are currently pending. Claims 2, 10, 11, 18, and 19 are cancelled. The amended claims do overcome the previously stated 102 and 103 rejections based upon Sugiura. However, upon further consideration, claims 1, 3-9, 12-17, 20, and 21 are rejected under the following new and previously stated 112, 102, and 103 rejections. This action is made FINAL as necessitated by the amendment.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/3/25 was filed after the mailing date of the Non-Final Rejection on 7/16/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-9, and 12-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 12, the limitation “the first layer is electrically conductive” is not supported by the specification. Paragraphs [0095] and [0104] of the specification discloses positive and negative electrode current collectors (metal substrate) that are conductive layers, but the specification does not explicitly teach a base film “210” (first layer) that is electrically conductive.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-9, and 12-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 12, it is unclear whether “aluminum nitride”, “aluminum oxide”, “lithium niobate”, and “titanium oxide” are electrically conductive materials. These materials are known in the art as non-electrically conductive (electrically insulating) materials as evidenced by Asai (US 2024/0097279) which discloses “Examples of inorganic particles that are not electrically conductive include particles of oxides such as aluminum oxide, … , titanium oxide, …, aluminum nitride” (See para. [0145]) and de Souza (US 2020/0014060) which discloses electrically insulating materials such as LiNbO3 (lithium niobate” (See para. [0065]). Even if the stoichiometric composition of aluminum oxide, titanium oxide, and aluminum nitride determines whether these material are electrically insulating or electrically conductive, the specification of the present application discloses examples of aluminum nitride (AlN), LiNbO3, aluminum oxide (Al2O3) that are known compositions of electrically insulating materials (See para. [0042]). In addition, there is no disclosure in the specification of any film formation method of the base film 210 (first layer) that forms electrically conductive compositions of aluminum nitride, aluminum oxide, lithium niobate, and titanium oxide.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 20 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Van Duren et al (US 2016/0181615).
Regarding claims 20 and 21, Van Duren et al discloses a solid state lithium battery comprising:
a cathode current collector “812” (first layer) over a substrate “802” (metal substrate), wherein examples of the substrate include a metal foil (e.g. aluminum, titanium, stainless steel, etc) and the cathode current collector includes a conductive metal nitride such as titanium nitride; and
a cathode “814” (positive electrode active material layer) over and in contact with the cathode current collector;
wherein each of the cathode current collector and cathode is a deposited film;
wherein each of the substrate and cathode current collector is conductive;
wherein the cathode current collector such as titanium nitride is a film of a first material having a first crystal structure comprising Ti (first cations) and N (first anions);
wherein the cathode is a film of a lithium cobalt oxide (second material / lithium cobaltate) having a second crystal structure comprising Li + Co (second cations) and O (second anions);
wherein the second cation comprise Co (transition metal atom);
wherein titanium nitride inherently has a rock-salt crystal structure and lithium cobalt oxide inherently has a layered rock-salt crystal structure ([0020],[0033],[0036], [0037] and Fig. 8).
Examiner’s note: the Office takes the position that the limitations “a value calculated by a formula (1) is less than or equal to 0.1, wherein La denotes a minimum value of a distance between one of the first cations and another one of the first cations in the first crystal structure, and wherein Lb denotes a minimum value of a distance between one of the second cations and another one of the second cations in the second crystal structure” and “a minimum angle formed by one of the first cations and two of the first anions is greater than or equal to 85° and less than or equal to 90°, and wherein a minimum angle formed by one of the second cations and two of the second anions is greater than or equal to 85° and less than or equal to 90°” are inherent characteristics of the Van Duren cathode current collector and cathode active material because Van Duren teaches the same materials for the first material (titanium nitride) and the second material (LiCoO2) as the present invention. For reference, the distance between titanium atoms (first cations) in titanium nitride (first crystal structure) is 3.0 A (La) and the distance between cobalt atoms (second cations) in lithium cobaltate (second crystal structure) is 2.82 A (Lb) which corresponds to (La-Lb)/La = 0.06. As disclosed in para. [0038] of the present application, “a preferable material for the base film 210 is to have conductivity and satisfy that a value calculated by the formula (1) is less than or equal to 0.1, and a further preferable material is to have conductivity and satisfy that a value calculated by the formula (1) is less than or equal to 0.06. When lithium cobaltate is used for the positive electrode active material layer 202, it is preferable for the base film 210 to use titanium nitride (TiN), aluminum (Al), aluminum nitride (AlN), aluminum oxide (A1203), LiNbO3, tantalum nitride (TaN), titanium oxide, Cu, and the like” and in para. [0047], “Thus, in the case of lithium cobaltate, the minimum value of an angle formed by the cobalt atom and the oxygen atom coordinated to the cobalt atom is 90°. Similarly, assuming, as a crystal structure model of titanium nitride, a model where titanium that is a metal atom is coordinated to six nitrogen atoms, the angle formed by the titanium atom and the nitrogen atom is supposed to be 180° and 90°. Thus, in the case of titanium nitride, the minimum value of an angle formed by the titanium atom and the nitrogen atom coordinated to the titanium atom is 90°”.
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, 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, 3-9, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Van Duren et al (US 2016/0181615) in view of Tanaka (US 2014/0147746).
Regarding claims 1, 3-7, 9, and 12-17, Van Duren et al discloses a solid state lithium battery comprising:
a cathode current collector “812” over a substrate “802” (metal substrate), wherein examples of the substrate include a metal foil (e.g. aluminum, titanium, stainless steel, etc); and
a cathode “814” (positive electrode active material layer) over and in contact with the cathode current collector;
wherein each of the cathode current collector and cathode is a deposited film;
wherein each of the substrate and cathode current collector is electrically conductive;
wherein the cathode is a film of a lithium cobalt oxide (second material / lithium cobaltate) having a second crystal structure comprising Li + Co (second cations) and O (second anions);
wherein the second cation comprise Co (transition metal atom) ([0020],[0033],[0036], [0037] and Fig. 8).
However, Van Duren et al does not expressly teach a first material comprising any of aluminum nitride, aluminum oxide, lithium niobate, and titanium oxide (claims 1 and 12).
Tanaka discloses a current collector “3” comprising a metal layer “3b” (metal substrate) and an adhesion layer (first layer) over the metal layer and including a metal oxide-based electrically conductive paste such as titanium oxide ([0048]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the Van Duren cathode current collector to include titanium oxide in order to decrease contact resistance on the interface between adjacent layers and prevent separation of the attached surfaces ([0048]). In addition, the invention as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made because the disclosure of Tanaka indicates that titanium oxide is a suitable material for use as an electrically conductive metal oxide. The selection of a known material based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07). As such, it would be obvious to use titanium oxide.
Examiner’s note: the Office takes the position that the limitations “a value calculated by a formula (1) is less than or equal to 0.1, wherein La denotes a minimum value of a distance between one of the first cations and another one of the first cations in the first crystal structure, and wherein Lb denotes a minimum value of a distance between one of the second cations and another one of the second cations in the second crystal structure” and “a minimum angle formed by one of the first cations and two of the first anions is greater than or equal to 85° and less than or equal to 90°, and wherein a minimum angle formed by one of the second cations and two of the second anions is greater than or equal to 85° and less than or equal to 90°” are inherent characteristics of the Van Duren/Tanaka cathode current collector and cathode active material because Van Duren as modified by Tanaka teaches the same materials for the first material (titanium oxide) and the second material (LiCoO2) as the present invention. For reference, the distance between titanium atoms (first cations) in titanium oxide (first crystal structure) is 3.0 A (La) and the distance between cobalt atoms (second cations) in lithium cobaltate (second crystal structure) is 2.82 A (Lb) which corresponds to (La-Lb)/La = 0.06. As disclosed in para. [0038] of the present application, “a preferable material for the base film 210 is to have conductivity and satisfy that a value calculated by the formula (1) is less than or equal to 0.1, and a further preferable material is to have conductivity and satisfy that a value calculated by the formula (1) is less than or equal to 0.06. When lithium cobaltate is used for the positive electrode active material layer 202, it is preferable for the base film 210 to use titanium nitride (TiN), aluminum (Al), aluminum nitride (AlN), aluminum oxide (A1203), LiNbO3, tantalum nitride (TaN), titanium oxide, Cu, and the like” and in para. [0047], “Thus, in the case of lithium cobaltate, the minimum value of an angle formed by the cobalt atom and the oxygen atom coordinated to the cobalt atom is 90°. Similarly, assuming, as a crystal structure model of titanium oxide, a model where titanium that is a metal atom is coordinated to six nitrogen atoms, the angle formed by the titanium atom and the oxygen atom is supposed to be 180° and 90°. Thus, in the case of titanium oxide, the minimum value of an angle formed by the titanium atom and the oxygen atom coordinated to the titanium atom is 90°”.
Regarding claim 8, Van Durent et al as modified by Tanaka does not expressly teach a positive electrode current collector layer and a first layer comprising a same metal element.
Van Duren et al discloses examples of the substrate include a metal foil (e.g. aluminum, titanium, stainless steel, etc) ([0020]).
Therefore, the invention as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made because the disclosure of Van Duren indicates that titanium is a suitable material for use as a substrate. The selection of a known material based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07). As such, it would be obvious to use titanium.
Response to Arguments
Applicant's arguments filed 10/16/25 have been fully considered but they are not persuasive.
The Applicant argues that “according to Van Duren, materials of substrate 100, which the Office Action correlates with substrate 802, includes aluminum oxide (e.g., alumina), silicon oxide (e.g., silica), zirconium oxide (e.g., zirconia), aluminum nitride, a semiconductor material, such as silicon and/or germanium, a metal foil (e.g., aluminum, titanium, stainless steel, etc.), and/or a polymer or plastic, yttrium-stabilized zirconia and conductive oxides, such as indium-tin oxide (ITO), aluminum-doped zinc oxide, and fluorine-doped tin oxide. Van Duren describes over fifteen combinations of materials for substrate 100. Van Duren also describes that material(s) of cathode current collector 812 includes a noble metal, such as gold, platinum, or a combination thereof, a conductive metal oxide, a conductive metal nitride, a conductive metal carbide, or a
combination thereof (e.g., fluorine-doped tin oxide, titanium nitride, tantalum nitride, ITO, and indium-zinc oxide). Although Van Duren may describe over one-hundred material combinations for the substrate 100 and the substrate 812, Van Duren does not describe or suggest the noted features of claim 20.”.
In response, Van Duren discloses aluminum oxide, silicon oxide, zirconium oxide, aluminum nitride, a semiconductor material, a metal foil (e.g., aluminum, titanium, stainless steel, etc.), and/or a polymer as suitable materials for the substrate, one of ordinary skill in the art would have envisaged a metal foil such as titanium in order to simplify the method of forming a solid-state battery. In addition, Van Duren also discloses examples of the cathode current collector including fluorine-doped tin oxide, titanium nitride, tantalum nitride, ITO, and indium zinc oxide (see para. [0024]). So, there are only five specific examples of materials suitable for the cathode current collector. Further, Van Duren also discloses a cathode that includes lithium and cobalt (e.g. lithium cobalt oxide) (see para. [0037]). Therefore, the combination of a substrate that is titanium, a cathode current collector that is titanium nitride, and a cathode that is lithium cobalt oxide would have been anticipated by the teachings of Van Duren. According to MPEP 2131.02, Section III, “A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination”. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
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.
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/T.S.C/Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 12/18/2025
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