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), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 5, 2026 has been entered.
Response to Arguments
Applicant's arguments filed January 5, 2026 have been fully considered but they are not persuasive.
The applicant asserts that the observed difference in cycle performance of approximately 1.5% is meaningful and indicative of a technical advantage in the context of lithium secondary battery cycle characteristics. This argument has been fully considered, but has not been found to be persuasive.
Here, the applicant has not established that the single example cited in their arguments in regards to a demonstration of unexpected results is statistically significant.
Where the applicant indicates that their example demonstrates unexpected results, there is a burden on the applicant that the differences in results are of statistical significance, as per MPEP section 716.02(b): “The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP § 716.02(c).”). Here, where the applicant asserts that their example demonstrates unexpected results over their other comparative examples, it is noted that the difference between the example and comparative example 1 shown in the instant application’s figure 3 demonstrates approximately a 1.5% difference in round-trip efficiency. Without an indication or statistical analysis that a 1.5% difference is statistically significant, such a difference is insufficient to determine unexpected results. It is not clear, based on the applicant’s disclosure that a 1.5% difference represents a statistically significant difference.
Additionally, in regards to the applicant’s previously presented argument of unexpected results, it is noted that the claims are still not commensurate in scope with the example embodiment which is asserted as demonstrating unexpected results, as per MPEP section 716.02(d): “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.).”.
Here, the applicant’s example is not commensurate in scope with the claimed subject matter, as the claimed subject matter comprises, among other features, “a positive electrode capable of occluding and releasing lithium”, and “a negative electrode including a negative electrode current collector”, without providing further detail regarding said features. Here, the example that is being asserted as demonstrating unexpected results comprises a copper foil and lithium metal as an electrode and counter electrode, where the copper foil is doubly covered with a separator “3401” produced by Celgard LLC (Specification Paragraph 0051).
Additionally, where the claimed subject matter uses LiPF6 at a concentration of 0.1 M, the example embodiment uses an electrolyte solution prepared by dissolving LiPF6 in vinylene carbonate at a concentration of 1.0 M, as discussed in specification paragraph 0051 (“A solution prepared by dissolving LiPF6 in vinylene carbonate (hereinafter, abbreviated as "VC") at a concentration of 1.0 mol/L was used as an electrolyte solution.”). As the example has a concentration of 1.0 M, and the claims require a concentration of 0.1 M, the example is not commensurate in scope with the claims.
Accordingly, where the claims require an LiPF6 concentration which is incompatible with the example embodiment, the example is not commensurate in scope with the claims, and the argument of unexpected results is not persuasive.
Additionally, the applicant asserts that the prior art of record fails to teach structure wherein LiPF6 is, as the sole electrolyte salt dissolved into the vinylene carbonate at a concentration of 0.1 mol/L. This argument has been fully considered but has not been found to be persuasive.
Based on the language of the submitted claim amendment, the claim limitation requires dissolving of an electrolyte salt into the vinylene carbonate at a concentration of 0.1 mol/L, this limitation, which requires a process in a product claim, is treated as a product by process claim. Accordingly, it is not required that the discloses invention teach the full scope of the limitation, but rather that it teaches scope that could result in the structure resulting by the process step.
Here, where the current limitation requires that the salt be dissolved in the vinylene carbonate at a concentration of 0.1 mol/L, Kubota discloses a content of at least 0.5 mol/kg of LiPF6 as their electrolyte salt (Paragraph 0051, “The content (concentration) of these lithium salts is preferably in the range of 0.5 mol / kg to 3.0 mol /kg with respect to the solvent.”). Where LiPF6 has a density of 1.35 kg/L, 0.5 mol/kg is equal to 0.875 mol/L.
Accordingly, where the electrolyte salt is dissolved into a solvent (Paragraph 0044, “and a lithium salt as an electrolyte salt dissolved in the non-aqueous solvent.”), the process by which the salt is dissolved into the solvent includes a point in time during the dissolving process where the concentration is at all values between 0 and the final concentration value. Accordingly, where 0.875 mol/L is greater than 0.1 mol/L, the concentration of LiPF6 would be at the required concentration of 0.1 mol/L during the process step of dissolving the lithium salt, thereby reading upon the limitation of the instant claim.
Claim Rejections - 35 USC § 112
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 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.
Claim 1 recites the limitation "the only electrolyte salt" in the final section of the claim. There is insufficient antecedent basis for this limitation in the claim.
Additionally, Claims 2-3 are rejected as a result of their dependence on an indefinite claim.
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubota (JP 2004063432 A), in view of Schmitz (US 20190067734 A1) and Chang (US 20190214672 A1).
Regarding Claim 1, Kubota discloses a nonaqueous electrolyte secondary battery (Paragraph 0158, “At that time, a negative electrode material, a positive electrode material, a non-aqueous solvent, an electrolyte salt, or the like capable of inserting and extracting a light metal is selected according to the light metal.”) comprising a positive electrode capable of occluding and releasing lithium (Paragraph 0083, “Next, when discharging is performed, first, the lithium metal deposited on the negative electrode 22 is eluted as ions and is occluded in the positive electrode mixture layer 21b via the electrolytic solution impregnated in the separator 23.”) and a negative electrode including a negative electrode current collector (Paragraph 0027, “The negative electrode 22 has, for example, a structure in which a negative electrode mixture layer 22b is provided on both surfaces of a negative electrode current collector 22a”), and an electrolyte solution (Paragraph 0158, “At that time, a negative electrode material, a positive electrode material, a non-aqueous solvent, an electrolyte salt, or the like capable of inserting and extracting a light metal is selected according to the light metal.”) including a solvent (Abstract, “The separator 23 is impregnate with as electrolyte solution with lithium fused in a solvent.”).
Additionally, Kubota discloses a separator located between the positive electrode and the negative electrode (Abstract, “A positive electrode 21 and a negative electrode 22 are provided with a wound-round electrode body 20 wound round with an interposition of a separator.”).
Additionally, Kubota discloses structure wherein the solvent is composed only of vinylene carbonate (Paragraph 0105, “That is, the solvent contains at least one of a group consisting of ethylene carbonate, vinylene carbonate,”), as represented in regards to their example 2-5, which comprises 100% vinylene carbonate, as presented in Kubota’s table 3.
Additionally, Kubota discloses structure where the lithium metal dissolves in the electrolyte dissolves in the electrolyte solution during discharging (Paragraph 0101, “The secondary battery according to the third embodiment of the present invention uses lithium metal as a negative electrode active material, and the capacity of the negative electrode is represented by a capacity component due to precipitation and dissolution of lithium.”; Paragraph 0083, “Next, when discharging is performed, first, the lithium metal deposited on the negative electrode 22 is eluted as ions and is occluded in the positive electrode mixture layer 21b via the electrolytic solution impregnated in the separator 23.”)
In regards to the limitation of the instant claim which requires a coating film composed of a polymer of the vinylene carbonate is formed on a surface of the negative electrode, Kubota fails to disclose said structure. Therefore, we look to Schmitz, which discloses an electrolyte composition and an electrochemical cell (Abstract, “An electrolyte composition and an electrochemical cell that includes the electrolyte composition are included.”). Here, Schmitz discloses structure wherein their solvent comprises vinylene carbonate as a polymer film-forming additive (Paragraph 0005, “Common additives are for example flame retardants, overcharge protection additives and film forming additives which react during first charge/discharge cycle on the electrode surface thereby forming a film on the electrode. The film protects the electrode from direct contact with the electrolyte composition. One well-known additive film-forming additive is vinylene carbonate.”). Here, where Schmitz discloses the use of vinylene carbonate to protect the electrode from direct contact with electrode composition, and where Kubota discloses the use of vinylene carbonate as their solvent, it would be obvious to one ordinarily skilled in the art to make use of the vinylene carbonate solvent to form a protective film so as to prevent contact between the electrode and electrolyte, thereby reading upon and making obvious the limitation of the instant claim.
Additionally, where Schmitz discloses that the protective film layer is also an SEI layer (Paragraph 0066, “SEI forming additives are also named film forming additives and the two terms are used interchangeably herein. Preferably the SEI forming additive forms a passivation layer on the anode.”), and where SEI layers are ionically conductive, the lithium metal ions are conducted through to the negative electrode to precipitate between the coating film and the negative electrode during charging of the material which is a combination of Kubota and Schmitz.
Here, Kubota discloses structure wherein the lithium metal precipitates on the negative electrode during charging (Paragraph 0038, “In this secondary battery, lithium metal starts to precipitate on the negative electrode 22 at the time when the open circuit voltage (that is, the battery voltage) is lower than the overcharge voltage in the charging process.”), thereby resulting in structure wherein the lithium metal precipitates between the coating film, which is an SEI, and the negative electrode during charging.
In regards to the limitation which requires structure wherein the negative electrode consists of the negative electrode current collector in a completely discharged state, Kubota fails to disclose said structure. Therefore, we look to Chang, which discloses structure which comprises an anodeless lithium metal battery (Abstract, “An anodeless lithium metal battery”) comprising a nonaqueous electrolyte (Paragraph 0039, “The first liquid electrolyte 12b may be, for example, a high-concentration electrolyte solution, for example, a solution including a high-concentration of the lithium salt.”). Here, Chang discloses the use of an anodeless battery, which is a battery where the negative electrode consists of the negative electrode current collector, when in a completely discharged state (Paragraph 0034, “As used herein, the term “anodeless lithium metal battery” refers to a lithium metal battery which does not include an anode active material on the anode current collector before the first charge. In further detail, the disclosed anodeless lithium metal battery: i) does not include an anode active material,”), further disclosing that their anode current collector is a copper foil (Paragraph 0105, “a copper foil used as an anode current collector,”).
Here, Chang discloses that an anodeless battery has a benefit over a battery which comprises a negative electrode active material through disclosing that batteries comprising anode materials can result in dead volumes of lithium due to the formation of dendrites (Paragraph 0032, “In a lithium metal battery using a lithium metal thin film as an anode, a dead volume of lithium may be generated in the battery due to a lithium dendrite on the lithium metal thin film.”), where said dendrite results in a reduction of lifetime and capacity of the lithium metal battery (Paragraph 0032, “The formation of the lithium dendrite is understood to lead to a loss of electrochemically active lithium, and consequently reducing the lifetime and capacity characteristics of the lithium metal battery.”), as well as resulting in inconsistent volume expansion within the electrode (Paragraph 0032, “In addition, because the lithium metal thin film is planar in form, the lithium metal thin film may swell only in an upper or lower portion of the electrode during charge. As a result, it may be difficult to control the volume expansion of the lithium metal battery during charge and discharge within a desired range.”). Here, Chang discloses that their anodeless battery structure overcomes these detrimental effects (Paragraph 0033, “While not wanting to be bound by theory, it is understood that in the anodeless lithium metal battery according to an embodiment, an individual metal particle of the lithium metal or lithium metal alloy in the composite electrolyte may freely expand, so that the above-described drawbacks associated with the lithium metal battery including a lithium metal thin film are avoided.”) when the anodeless structure is present along with a dissolved lithium metal in the electrolyte (Paragraph 0033, “To solve this problem, the inventors have advantageously discovered that use of an anode current collector without a planar lithium metal thin film, together with a composite electrolyte comprising at least one of lithium metal or a lithium metal alloy, and a liquid electrolyte, results in improved energy density and charge-discharge efficiency of a lithium metal battery.”), where said dissolved lithium in the electrolyte is disclosed by Kubota, as discussed above. Accordingly, based on this disclosure of Chang, it would be obvious to one ordinarily skilled in the art to apply the negative electrode structure of Chang to the invention of Kubota, thereby resulting in structure wherein the negative electrode consists of the negative electrode current collector in a completely discharged state.
Additionally, Kubota discloses structure wherein the negative electrode current collector is a copper foil (Paragraph 0027, “The negative electrode current collector 22a is made of, for example, a metal foil such as a copper foil,”), as well as structure wherein the electrolyte solution further includes an LiPF6 as an electrolyte salt (Paragraph 0126, “As an electrolyte, LiPF6 was dissolved at a content of 1 mol / kg”; Paragraph 0050, “Among them, LiPF6 Is preferred because high conductivity can be obtained and the oxidation stability is also excellent”), as well as disclosing embodiments where LiPF6 is the only electrolyte salt in the electrolyte solution (Paragraph 0126, “As an electrolyte, LiPF6 Was dissolved at a content of 1 mol / kg,”).
Additionally, in regards to the limitation which requires structure wherein the electrolyte salt is dissolved in the vinylene carbonate at a concentration of 0.1 mol/L, where the claim requires dissolving of an electrolyte salt into the vinylene carbonate at a concentration of 0.1 mol/L, this limitation, which requires a process in a product claim, is treated as a product by process claim. Accordingly, it is not required that the discloses invention teach the full scope of the limitation, but rather that it teaches scope that could result in the structure resulting by the process step.
Here, where the current limitation requires that the salt be dissolved in the vinylene carbonate at a concentration of 0.1 mol/L, Kubota discloses a content of at least 0.5 mol/kg of LiPF6 as their electrolyte salt (Paragraph 0051, “The content (concentration) of these lithium salts is preferably in the range of 0.5 mol / kg to 3.0 mol /kg with respect to the solvent.”). Where LiPF6 has a density of 1.35 kg/L, 0.5 mol/kg is equal to 0.875 mol/L.
Accordingly, where the electrolyte salt is dissolved into a solvent (Paragraph 0044, “and a lithium salt as an electrolyte salt dissolved in the non-aqueous solvent.”), the process by which the salt is dissolved into the solvent includes a point in time during the dissolving process where the concentration is at all values between 0 and the final concentration value. Accordingly, where 0.875 mol/L is greater than 0.1 mol/L, the concentration of LiPF6 would be at the required concentration of 0.1 mol/L during the process step of dissolving the lithium salt, thereby reading upon the limitation of the instant claim.
Regarding Claim 2, modified Kubota makes obvious the invention of Claim 1. Additionally, Kubota discloses structure wherein the negative electrode current collector is composed of a metal that does not alloy with lithium, through their disclosure of a copper negative electrode current collector (Paragraph 0116, “and then uniformly applied to both surfaces of a negative electrode current collector 22a formed of a 10 μm-thick strip-shaped copper foil.”), based on the definition of the instant specification that the group of metals that do not alloy with lithium include copper, nickel, and iron (Paragraph 0037, “Specifically, the metal material may be a metal material that does not alloy with lithium. Examples of such a metal material include copper, nickel, iron, and alloys including the above metallic elements. Examples of the alloys include a copper alloy and a stainless steel.”).
Regarding Claim 3, modified Kubota makes the invention of Claim 2. Additionally, as discussed above in regards to Claim 2, Kubota discloses structure wherein the negative electrode current collector includes copper (Paragraph 0116, “and then uniformly applied to both surfaces of a negative electrode current collector 22a formed of a 10 μm-thick strip-shaped copper foil.”).
Conclusion
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/J.W.E./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725