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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), filed in this application after final rejection. Since this application was 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/25/2025 has been entered.
Response to Amendment
Applicant’s amendment, filed 10/02/2025, has been entered. Claim 1 is amended. Claims 2-5 have been cancelled. Claims 1 and 6-18 are now pending examination.
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.
Claims 1, and 5-9 are rejected under 35 U.S.C. 103 as being anticipated by Oh et al - US 20190379087 A1 (Hereafter referred to as “Oh”) in view of Fauteux et al - US 5538655 A1 (Hereafter referred to as “Fauteux”).
Regarding claims 1 and 6: Oh teaches a precursor solution (composition for electrolyte - comparative example 3, see Table 2, [0245]) for preparing a modified layer (gel layer) used in a lithium-based battery [0245] with liquid lithium electrolyte ([0245], wherein a gel polymer electrolytes (GPEs) are created by trapping lithium salt solution within a solid polymer host) comprising: an active substance (oligomer of formula 2, see [0245]), a lithium salt solution (1M LiPF6 see Table 2, [0245]) and an initiator (polymerization initiator, see Table 2),
wherein the lithium salt solution has a concentration of 0.5 M to 4 M (comparative example 3 teaches 1M LiPF6 which falls within the claimed range, see Table 2).
Oh teaches that an active substance (oligomer) may be present in an amount of 0.5-30 % ([0050], which is within the claimed range for the active substance). Oh teaches that the lithium salt solution may be present in an amount of 66.85-99.49% (Examples 9-14), which overlaps the claimed range for the lithium salt solution.
Oh fails to teach the active substance comprises polyethylene glycol diacrylate (PEGDA), polypropylene glycol diacrylate, polyurethane oligomer, lithium methacrylate, lithium acrylate, trimethylol propane triacrylate or a combination thereof. Additionally, Oh does not explicitly disclose in comparative example 3; wherein the initiator is benzoyl peroxide, wherein, in the precursor solution, the active substance has an amount of 5 wt% to 47.5 wt% the lithium salt solution has an amount of 50 wt% to 94.9 wt%, and the initiator has an amount of 0.1 wt% to 5 wt%
However, in a general embodiment, Oh teaches wherein the initiator is benzoyl peroxide, ( initiator may be selected as benzoyl peroxide (2-1) polymerization initiator, see [0168]), and the initiator has an amount of 0.1 wt% to 5 wt% (about 0.01 parts by weight, which is equivalent to 1.0 wt %, which falls within the claimed range, see 0170]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify comparative example 3 to substitute dimethyl 2,2-azobis(2-methylpropionate) with benzoyl peroxide at 1.0 wt % and modify the composition of comparative example 3 such that the amount of active substance is 0.5 wt% to 30 wt% and lithium salt solution is 66.9-89.9 wt% as taught by Oh (see [0168-0170], [0050] and Table 2, respectively, wherein addition amount (g) compared to ~100g total corresponds to wt% of lithium salt solution), because Oh et al. teach benzoyl peroxide is an effective alternative polymerization initiator and the amount of active substance of 0.5 wt% to 30 wt% and lithium salt of 66.9-89.9 wt% would yield the same predictable result of forming the modified layer (gel polymer electrolyte). Further, it has been held that combining embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness and involves only routine skill in the art.
Oh still fails to teach wherein the active substance comprises polyethylene glycol diacrylate (PEGDA), polypropylene glycol diacrylate, polyurethane oligomer, lithium methacrylate, lithium acrylate, trimethylol propane triacrylate or a combination thereof ()
However, Fauteux teaches a precursor solution (electrolyte, -Description - [2]) wherein the active substance is polyethylene glycol diacrylate (PEGDA) (col. 13, line 34)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the active substance of Oh, by substituting the oligomer of formula 2 for the polyethylene glycol diacrylate taught by Fauteux, to provide a linear oligomer that can increase freedom of movement in the resulting modified layer and overcome the disadvantages of immobilized ions (col. 9, lines 6-14).
Regarding claim 7: Oh teaches wherein the lithium salt solution has a concentration of 0.8 M to 2 M (comparative example 3 teaches 1M LiPF6- , which falls within the claimed range, see Table 2)
Regarding claim 8: Oh teaches wherein the lithium salt solution comprises a lithium salt (LiPF6 , comparative example 3, see Table 2 and [0085]) and an organic solvent (see Table 2), and the organic solvent is ethylene carbonate [0090].
Regarding claim 9: Oh teaches wherein the lithium salt is lithium hexafluorophosphate [0085].
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Oh et al - US 20190379087 A1 (Hereafter referred to as “Oh”) in view of Nakagawa et al - US 20200099087 A1 (Hereafter referred to as “Nakagawa”).
Regarding claim 10: Oh does not teach wherein the precursor solution comprises an additive, and the additive is an organic compound or a metal salt; wherein the organic compound is an oligomer comprising at least one of hydroxyl end group or amine end group, polysquarate, succinonitrile, 1,3-propane sultone, prop-i -ene-1,3-sultone, fluoroethylene carbonate, ethylene 16 glycol, polysorbate or a combination thereof, wherein the oligomer comprising at least one of hydroxyl end group or amine end group comprises a constitutional unit represented by
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or a combination thereof, wherein, the metal salt is lithium nitrate, sodium nitrate, potassium 2 nitrate or a combination thereof. However, Nakagawa teaches wherein the precursor solution comprises an additive [0100], and the additive is an organic compound [0100]; wherein the organic compound is an oligomer [0100] comprising at least one of hydroxyl end group (polyoxyethylene glycol, see [0100]) wherein the oligomer comprising at least one of hydroxyl end group comprises a constitutional unit represented by polyethylene
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[0269] and polypropylene
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[0269].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the precursor solution of Oh, by adding the oligomer taught by Nakagawa to provide an oligomer composition that allows for the desired viscosity and greater control over the shape of the formed electrode layer [0032].
Regarding claim 11: Oh does not teach wherein the oligomer comprising at least one of hydroxyl end group or amine end group comprises a constitutional unit represented by
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However, Nakagawa teaches wherein the oligomer comprising at least one of hydroxyl end group (“Pluronic type” oligomer contains hydroxyl end groups, see [0222]), comprises a constitutional unit represented by
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(“Pluronic type” oligomer contains constitutional unit x, as claimed, see [0222]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the precursor oligomer of Oh, such that it comprised the oligomer taught by Nakagawa to provide an oligomer composition that allows for the desired viscosity and greater control over the shape of the formed electrode layer [0032].
Regarding claim 12: Oh does not teach wherein the oligomer comprising at least one of hydroxyl end group or amine end group is
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wherein x is 1 to 20, y is 1 to 40 and z is 1 to 20, and x,y and z are the same or different.
However, Nakagawa teaches wherein the oligomer comprising at least one hydroxyl end group [0100] is
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([0222] teaches the “pluronic type” oligomer which constitutes the claimed structure) wherein x is 20, y is 20 and z is 20 (polymerization degree of 20, see [0222]), and x,y and z are the same (x,y,z = 20).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the precursor oligomer of Oh, such that it comprised the oligomer taught by Nakagawa to provide an oligomer composition that allows for the desired viscosity and greater control over the shape of the formed electrode layer [0032].
Regarding Claim 13: Oh teaches wherein the precursor solution further comprises a filler (Binder, see [0206]); Oh does not teach wherein the filler is titanium dioxide, silicon dioxide, zirconium dioxide, aluminum oxide, indium tin oxide, lanthanum manganite, lithium sulfide-based particle, lithium oxide-based particle, lithium phosphate-based particle, lithium lanthanum zirconium tantalum oxide, lithium lanthanum aluminum zirconium oxide or a combination thereof.
However, Nakagawa teaches wherein the filler is titanium dioxide [0302].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the precursor solution of Oh, by adding the titanium dioxide particles taught by Nakagawa to provide a material to aid in suppressing thermal shrinkage and add to the mechanical strength of the formed layer [0302].
Response to Arguments
Applicant's arguments filed 10/02/2025 have been fully considered but they are not persuasive.
Applicant argues that Oh and the present invention are not in the same field. The argument is unconvincing because they are both in the field of batteries. Applicant's further arguments in this section are unconvincing because they are directed to the amendment, which has not been entered.
In response to applicant's argument that the present invention relates to a modified layer deposited on an electrode and/or a separator, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Furthermore, the claims do not recite that the intended use of the modified layer is for deposition on an electrode and/or a separator. The claim is broad enough to include purely decorative coatings on a liquid lithium electrolyte battery.
In response to Applicant’s argument that the amount of initiator in Comparative Example 3 is incorrectly reported, the argument is unconvincing because Oh teaches that the oligomer (active substance) may be present in an amount of 0.5-30 % [0050] and that the initiator may be present in an amount of 0.001 to 0.2 times the amount of oligomer [0170], or 0.00005-6%, based on the range of [0050], which overlaps the claimed range for initiator. Further, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. See MPEP 2144.05.A.
Applicant’s argument of unexpected results is unconvincing because it is not commensurate in scope with the claims, which are open to many possible active substances, in combination with many lithium salts, and 4 initiators. Applicant has showed results for a single combination out of these, in a context that is not claimed, and changing two variables at the same time.
Applicant argues that the electrolyte of Jan and the modified layer of the present invention have different functions and practical applications. The argument is unconvincing because the present claims are to a solution, not to a modified layer. Furthermore, Applicant appears to be assuming properties and intended uses of the modified layer that are not claimed. Applicant’s broad assertion that Jan and the instant invention have different functions and practical applications is not accompanied by an explanation of how the instant claims define a patentably distinct structure from the composition rendered obvious by Oh in view of Jan.
Applicant argues that the compositions of Nakagawa are different from those of Oh and so would be difficult to combine. The polyethylene glycol of Nakagawa is taught as a viscosity modifier [0032]. This use does not depend strongly on the chemistry of the composition to which it is added, and it would have been obvious to have added the PEG of Nakagawa to the composition of Oh at least for viscosity control. Likewise, the use of a filler such as titanium dioxide would add mechanical strength [0302]. This use does not depend strongly on the chemistry of the composition to which it is added, and it would have been obvious to have added the titanium dioxide of Nakagawa to the composition of Oh at least for better mechanical strength.
Likewise, the use of a filler such as titanium dioxide would add mechanical strength [0302]. This use does not depend strongly on the chemistry of the composition to which it is added, and it would have been obvious to have added the titanium dioxide of Nakagawa to the composition of Oh at least for better mechanical strength.
The argument states that the declaration of 4/9/25 has been ignored. The argument is incorrect. The declaration was considered and found unconvincing because it is not commensurate with the claims. As stated in the final rejection:
"A) the alleged showing of inoperability as a modified layer is much more specific than the intended use in the claims. The showing is directed towards the use of a layer in combination with a specific electrolyte under specific operating conditions. The recited intended use is much broader. For example, it could include decorative coatings on a liquid lithium electrolyte battery.
B) The alleged showing of unexpected results is not commensurate in scope with the claims, which are open to trillions of possible active substances, in combination with many lithium salts, and 4 initiators. Applicant has showed results for a single combination out of these, in a context that is not claimed, and changing two variables at the same time."
Even in comparison to claim 5, the results show only one of the 5 active substances in combination with 1 of the 4 claimed initiators in a context that is not claimed and changing two variables at the same time.
Applicant argues that Oh and Fauteux do not provide teach the claimed range of initiator and salt solution.
The argument is unconvincing. Applicant argues that no examples within the claimed range are provided. The argument is unconvincing because the general teaching overlaps the range. Oh teaches that the oligomer (active substance) may be present in an amount of 0.5-30 % [0050] and that the initiator may be present in an amount of 0.001 to 0.2 times the amount of oligomer [0170], or 0.00005-6%, based on the range of [0050], which overlaps the claimed range for initiator. Further, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. See MPEP 2144.05.A.
Applicant argues that Fauteux does not teach the claimed amount of lithium salt solution. The argument is unconvincing because Oh teaches an overlapping range (examples 9-14). 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US-20220246936-A1, pertinent to a similar composition seen in claim 1.
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/PAUL CHRISTIAN ST WYROUGH/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723
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