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 .
Status of Claims
Applicant’s amendment and arguments filed 12/15/2025 have been fully considered. Claim(s) 1, 4, 5, 9, 22 is/are amended; claim(s) 3,6-8,10-20 and 29-35 remain withdrawn. Claims 1-2,4-5,9 and 21-28 are pending review in this Office action. Examiner affirms that the original disclosure provides adequate support for the amendment.
Upon considering said amendment and arguments, the previous rejections under 35 U.S.C. 102 and 35 U.S.C. 103 set forth in the Office action mailed 09/15/2025 has/have been withdrawn. Applicant’s amendment necessitated the new grounds of rejection below.
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, 4, 5, 9, 21, 23-26, and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 6, 9-12, 14, and 18 of U.S. Patent No. US11276852B2 (“Reference”). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claims 1, 5, conflicting claims (Ref. claims 1, 4, 6, 9) of Reference correspond with the instant claim.
Reference claims a lithium metal battery comprising a cathode and an anode (Ref. claim 1, “a cathode, an anode,”).
Reference further claims an anode-protecting layer comprising an elastomer (Ref. claim 1, “an anode-protecting layer…comprising an elastomer”). As Reference indicates that this anode-protecting layer acts as a separator to electrically isolate the anode and the cathode (Ref. col. 3 ln. 52-53), and no other structure such as a conventional porous separator is provided to separate the cathode and anode (Ref. claim 1, “without a porous separator”), the anode-protecting layer comprising an elastomer is broadly and reasonably interpreted as an elastic polymer separator disposed between said cathode and said anode (see instant claims 1, 5).
Reference claims elastic polymer separator comprises a high-elasticity polymer and said elastic polymer separator has a thickness from 10.1 to 100 µm (Ref. claim 1, “10.1 μm to 100 μm”) which falls within the claimed range of 50 nm to 100 µm.
Reference further claims the elastomer has “a fully recoverable tensile elastic strain from 2% to 1,000%”, and does not indicate that any additive is dispersed therein at the time of measurement (Ref claim 1), this matching the claimed range of fully recoverable tensile strain from 2%-1000% (see instant claims 1, 5).
The elastomer has a lithium-ion conductivity from 10−8 S/cm to 5×10−2 S/cm (Ref. claim 1) which overlaps with the claimed range of 10-6 S/cm to 5 × 10-2 S/cm with sufficient specificity so as to anticipate the claimed range (see instant claims 1, 5).
Reference further claims the high-elasticity polymer comprises an elastomer (Ref. claim 1) containing a lithium ion-conducting additive (Ref. claim 6) such as polydimethylsiloxane, a sulfonated derivative thereof, or a combination thereof (Ref. claim 9). Polydimethylsiloxane is recognized in the art as a species of poly(alkyl siloxane) and polysiloxane (Uehara [0026], [0022]).
Consequently, Reference’s high-elasticity polymer comprises an elastomer or rubber selected from polysiloxane, poly(alkyl siloxane), a copolymer thereof, a sulfonated version thereof, or a combination thereof (see instant claim 1).
Reference claims forming the high elasticity polymer from a group of polymers including ethylene oxide-epichlorohydrin copolymer (Ref. claim 4). As the elastomer is inherently lightly cross-linked during curing to form its elasticity (Ref. col. 14 ln. 42-44), and ethylene oxide and ethylene glycol are known in the art to share the same linkage, Reference inherently claims a high-elasticity polymer containing a lightly cross-linked network of polymer chains having an ethylene glycol linkage through claiming ethylene oxide-epichlorohydrin copolymer.
Furthermore, as Reference does not positively recite an additive in the elastomer in claims 1 and 4, the elasticity of the polymer and the fully recoverable tensile elastic strain are necessarily the same (2% to 1,000%, Ref. claim 1), this range closely encompassing the claimed range of 5-1000% so as to anticipate the claimed range with sufficient specificity (see instant claim 5).
Regarding claim 4, conflicting claim(s) 1 of Reference have corresponding limitations that are within the scope of the instant claim.
Regarding claim 9, conflicting claim(s) 9 of Reference have corresponding limitations that are within the scope of the instant claim.
Regarding claim 21, conflicting claim(s) 5 of Reference have corresponding limitations that are within the scope of the instant claim.
Regarding claim 23, conflicting claim(s) 10 of Reference have corresponding limitations that are within the scope of the instant claim.
Regarding claim 24, conflicting claim(s) 11 of Reference have corresponding limitations that are within the scope of the instant claim.
Regarding claim 25, conflicting claim(s) 12 of Reference have corresponding limitations that are within the scope of the instant claim.
Regarding claim 26, conflicting claim(s) 14 of Reference have corresponding limitations that are within the scope of the instant claim.
Regarding claim 28, conflicting claim(s) 18 of Reference have corresponding limitations that are within the scope of the instant claim.
Claim Rejections - 35 USC § 102
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 1-2,4-5,9,21-28 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Jang US20190393541A1 (cited in 09/15/2025 Office action), evidenced by Uehara US20080292574A1
Regarding claims 1, 5, Jang discloses a lithium metal battery comprising a cathode and an anode, wherein the anode comprises an elastomer-based anode-protecting layer between the anode and cathode layers ([0014-0015], FIG. 2), wherein the elastomer-based anode-protecting layer is disclosed to act as a separator to electrically isolate the anode and the cathode ([0017], FIG. 2) and is thus broadly and reasonably interpreted as the elastic polymer separator disposed between said cathode and said anode (claims 1, 5).
Jang further discloses that the elastic polymer separator comprises a high-elasticity polymer (“elastomer”) and said elastic polymer separator has a thickness from 1 nm to 100 µm, preferably 10 nm to 10 µm ([0046]), which appears to overlap with the claimed range of 50 nm to 100 µm with sufficient specificity so as to anticipate the claimed range. Furthermore, Jang produces experimental examples of the elastic polymer separator having thicknesses of 1-2 µm (pp. 13 Table 1), which fall within and anticipate the claimed range (claims 1, 5).
Jang discloses that the elastic polymer separator has a lithium ion conductivity of 10-8 S/cm to 5×10-2 S/cm (abstract), which also appears to overlap with the claimed range of 10-6 S/cm 5×10-2 S/cm so as to anticipate the claimed range with sufficient specificity, and produces experimental examples having a Li-ion conductivity within these ranges; for example, Jang Example E-1p is produced having a Li-ion conductivity in the range of 1.3*10-4 to 3.3*10-3 S/cm (Jang pp. 13 Table 1), which falls within and anticipates the claimed range (claims 1, 5).
Jang’s elastic polymer separator further comprises a fully recoverable tensile strain from 2% to 1000% when measured without any additive dispersed therein ([0022]) (claims 1, 5)
Jang further discloses forming the high-elasticity polymer comprising or as a co-polymer with polydimethylsiloxane or a sulfonated derivative thereof ([0101]), polydimethylsiloxane being recognized in the art as a species of poly(alkyl siloxane) and polysiloxane (Uehara [0022], [0026]). Consequently, Jang’s high-elasticity polymer comprises an elastomer or rubber selected from polysiloxane, poly(alkyl siloxane), a copolymer thereof, a sulfonated version thereof, or a combination thereof (claim 1).
Jang discloses curing a monomer or oligomer component of the elastomer to form a lightly cross-linked polymer (Jang [0087]), this polymer being in the form of a matrix (i.e., a network of polymer chains) ([0084]). Jang discloses forming the high-elasticity polymer as a co-polymer with polyethylene oxide ([0101]), which would inherently result in the cross-linked network of polymer chains having an ethylene glycol linkage (ethylene oxide and ethylene glycol having the same linkage) (claim 5)
Jang discloses that the cross-linked network of polymer chains (i.e., the elastomer matrix composite) comprises a degree of crosslinking that affords an elasticity of the polymer in a preferable range of 5-500% (claim 5).
Regarding claim 2, Jang discloses the lithium metal battery of claim 1, wherein the anode has an anode current collector but initially the anode has no lithium or lithium alloy as an anode active material (“does not contain a lithium foil or lithium coating at the anode”) supported by said anode current collector when the battery is made and prior to a charge or discharge operation of the battery ([0073])
Regarding claim 4, Jang discloses the lithium metal battery of claim 1, wherein the lithium metal battery does not include lithium-sulfur battery or lithium-selenium battery ([0014]).
Regarding claim 9, Jang discloses the lithium metal battery of claim 1, wherein the high-elasticity polymer forms a mixture, copolymer, or interpenetrating network with a lithium ion-conducting polymer selected from poly(ethylene oxide) (PEO), Polypropylene oxide (PPO), poly(acrylonitrile) (PAN), poly(methyl methacrylate) (PMMA), poly(vinylidene fluoride) (PVdF), Poly bis-methoxy ethoxyethoxide-phosphazene, Polyvinyl chloride, Polydimethylsiloxane, poly(vinylidene fluoride)-hexafluoropropylene (PVDF-HFP), a sulfonated derivative thereof, or a combination thereof ([0101]).
Regarding claim 21, Jang discloses the lithium metal battery of claim 1, wherein the high-elasticity polymer further contains a reinforcement material dispersed therein wherein the reinforcement material is selected from a polymer fiber, a glass fiber, a ceramic fiber, or a combination thereof ([0030])
Regarding claim 22, Jang discloses the lithium metal battery of claim 1, wherein the elastic polymer separator is permeable to lithium ions and designed or selected to have a sufficiently high lithium-ion conductivity ([0026]) and therefore serves as a solid electrolyte. The battery further comprises a working electrolyte in contact with an anode active material and/or a cathode active material ([0046]), wherein the working electrolyte is selected from an organic liquid electrolyte, ionic liquid electrolyte, polymer gel electrolyte, quasi-solid electrolyte having a lithium salt dissolved in an organic or ionic liquid with a lithium salt concentration higher than 2.0 M (“2M-14M”) or a combination thereof ([0102]),
Regarding claim 23, Jang discloses the lithium metal battery of claim 1, wherein said cathode comprises a cathode active material selected from an inorganic material, an organic material, a polymeric material, or a combination thereof (Jang [0031]).
Regarding claim 24, Jang discloses the lithium metal battery of claim 23, wherein said inorganic material, as a cathode active material, is selected from a metal oxide, metal phosphate, metal silicide, metal selenide, transition metal sulfide, or a combination thereof (Jang [0031]).
Regarding claim 25, Jang discloses the lithium metal battery of claim 23, wherein said inorganic material is selected from a lithium cobalt oxide, lithium nickel oxide, lithium manganese oxide, lithium vanadium oxide, lithium-mixed metal oxide, lithium iron phosphate, lithium manganese phosphate, lithium vanadium phosphate, lithium mixed metal phosphate, lithium metal silicide, or a combination thereof (Jang [0032]).
Regarding claim 26, Jang discloses the lithium metal battery of claim 23, wherein said inorganic material is selected from a lithium transition metal silicate, denoted as Li2MSiO4 or Li2MaxMbySiO4, wherein M and Ma are selected from Fe, Mn, Co, Ni, V, or VO; Mb is selected from Fe, Mn, Co, Ni, V, Ti, Al, B, Sn, or Bi; and x+y<1 (Jang [0033]).
Regarding claim 27, Jang discloses lithium metal battery of claim 1, wherein the cathode comprises a cathode active material selected from lithium iron phosphate (LiFePO4) lithium manganese oxide (LiMnO2), and lithium cobalt oxide (LiCoO2) (Jang [0032], [0075]). An example embodiment is produced with LiCoO2 ([0126]).
Regarding claim 28, Jang discloses the lithium metal battery of claim 24, wherein said metal oxide or metal phosphate is selected from a layered compound LiMO2, spinel compound LiM2O4, olivine compound LiMPO4, silicate compound Li2MSiO4, Tavorite compound LiMPO4F, borate compound LiMBO3, or a combination thereof, wherein M is a transition metal or a mixture of multiple transition metal (Jang [0036])
Response to Arguments
Amendment to claims 9, 22 (see Issue/Remark no. 1, 2) overcome the typographical error of these claims; the objections to these claims filed 09/15/2025 are withdrawn.
The rejection of claims 1, 4, 9, 21, 23-26, and 28 on the grounds of nonstatutory double patenting over claims 1, 4, 5, 6, 9-12, 14, and 18 of U.S. Patent No. US11276852B2 (Reference) is maintained. An additional rejection of claim 5 on the grounds of nonstatutory double patenting over claims 1, 4 of US11276852B2 has been necessitated by amendment (Issue/Remark no. 3). Furthermore, the remarks as filed do not properly address the rejection of these claims on the grounds of nonstatutory double patenting.
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03.
The amendments to the claims filed 12/15/2025 are currently being considered as an bona fide reply under MPEP 714.03. However, any response to this Office action must contain a full response. Specifically, a response to the NSDP rejection would include a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, otherwise the response will not be considered “fully responsive” and may not be considered to be bona fide.
Applicant’s remarks regarding rejection of claims 1, 2, 4, 9, 21-26, and 28 under 35 U.S.C. 102, 27 under 35 U.S.C. 102/103 as anticipated or obvious over Jang (US20190393541A1) (Issue/Remark no. 4, 5) have been considered but are moot since Applicant's amendment necessitated a different interpretation of Jang as laid out in the rejections of record, or are moot as the claim amendment has necessitated new grounds of rejection under new prior art discussed above.
Applicant’s remarks regarding rejection of claim 5 as unpatentable under 35 U.S.C. 103 over Jang in view of Pan et al. (US20180301707A1) (Issue/Remark no. 6) have been have been considered but are moot since Applicant's amendment necessitated a different interpretation of Jang as laid out in the rejections of record, or are moot as the claim amendment has necessitated new grounds of rejection under new prior art discussed above.
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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/E.C./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 3/3/2026