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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 21, 2026, has been entered.
Response to Arguments
Applicant’s arguments filed August 21, 2026, have been fully considered but they are not persuasive.
Applicant contends that the instant specification demonstrates evidence of unexpected results for the use of fumed alumina with 10-50 nm primary particles (pp. 8-9). However, Huang teaches that replacing larger alumina particles with nano-alumina (Aeroxide Alu C) increases ionic conductivity (Huang 2.1 Materials and 2.2 Separator fabrication). The improvement is therefore not unexpected.
Applicant contends that one skilled in the art would not be motivated to modify the alumina coating of Jang, since it is presented as a comparison example inferior to zirconia (pp. 9-12). However, Jang explicitly discloses an alumina-coated electrode. No obviousness arguments are necessary to arrive at this configuration. The existence of superior alternatives does not eliminate motivation to improve a known product.
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.
Claim(s) 1, 4-6, 9, 11-15, 19-21, and 30-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. ("High Dielectric, Robust Composite Protective Layer for Dendrite-Free and LiPF6 Degradation-Free Lithium Metal Anode," Advanced Functional Materials 29(48), 1905078, September 2019) in view of Huang et al. ("Fabricating a high performance composite separator with a small thickness for lithium ion batteries," Composites Science and Technology 168, pp. 346-352, October 2018) and Ares et al. ("Effects of silane functionalization of alumina whiskers on high-density polyethylene composites," Journal of Composite Materials 48(25), pp. 3141-3151, October 2014), as evidenced by "Aeroxide Alu C 805" (Aeroxide Alu C 805 Product Information, Degussa AG, Aerosil.com, March 2008; hereinafter referred to as "C805") and the instant specification.
Regarding claim 1, Jang discloses an electrode for a lithium battery comprising a metal layer (lithium) 450 µm thick, which falls within the range of the instant claim, coated with a coating layer comprising an organic binder (PVdF-HFP) and aluminum oxide with a weight ratio of Al2O3:binder of 4, which falls within the range of the instant claim (Jang 4. Experimental Section).
Jang does not teach that the aluminum oxide consists of aggregates of primary particles with a d50 of 10-50 nm obtained by a pyrogenic process.
Huang is directed to an improved composite separator for lithium-ion batteries (Huang Abstract). Huang teaches that replacing micron-sized alumina particles like those of Jang with nano-alumina (Aeroxide Alu C) increases ionic conductivity (Huang 2.1 Materials and 2.2 Separator fabrication). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to replace the micro-alumina of Jang with the nano-alumina of Huang in order to improve conductivity.
Ares is directed to improving rheological properties of polymer-alumina composites (Ares Abstract). Ares teaches that adding silane functionalization to alumina particles in polymer-alumina composites significantly reduces viscosity (Ares Fig. 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use silane-functionalized alumina in the coating of modified Jang in order to reduce viscosity.
The silane-functionalized version of Aeroxide Alu C (Aeroxide Alu C 805) is a pyrogenic alumina with a primary particle size of 13 nm (C805, first line and Physico-chemical Data table), which falls within the range of the instant claim. Applicant has indicated that pyrogenic oxides produce aggregate particles (p. 4, lines 15-18 of the instant specification). The Alu C 805 therefore necessarily consists of aggregates of the primary particles.
Regarding claim 4, the coating of modified Jang includes LiClO4 (Jang 4. Experimental Section).
Regarding claim 5, the surface of Alu C 805 is treated with octylsilane (C805, first line), which is an organosilane.
Regarding claim 6, modified Jang does not specify an aggregate particle size. However, if the mean primary particle size is 13 nm, the aggregate size must be at least 26 nm, which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any appropriate aggregate particle size, including sizes within the range of the instant claim.
Regarding claim 9, the metal is lithium (Jang 4. Experimental Section).
Regarding claim 11, the coating thickness is 21.7 µm (Jang 4. Experimental Section).
Regarding claim 12, modified Jang teaches a method for producing the electrode comprising comparing a mixture of the binder, aluminum oxide and solvent; coating the mixture of the surface of the metal layer; and drying the coating layer (Jang 4. Experimental Section).
Regarding claim 13, the solvent is N,N-dimethylformamide (Jang 4. Experimental Section).
Regarding claim 14, modified Jang teaches a method for producing a battery using the electrode (Jang 4. Experimental Section).
Regarding claim 15, modified Jang teaches a battery using the electrode (Jang 4. Experimental Section).
Regarding claim 19, the binder is PVdF-HFP (Jang 4. Experimental Section).
Regarding claim 21, the coating is applied directly to the metal layer (Jang 4. Experimental Section).
Regarding claim 30, Alu C 805 is a fumed alumina with aluminum as the only metal (C805, first line and Physico-chemical Data table).
Regarding claim 20, the binder is PVdF-HFP (Jang 4. Experimental Section).
Regarding claim 31, modified Jang does not teach a metal layer thickness within the claimed range. However, the battery operates by stripping and plating the lithium (Jang Fig. 9), so thickness will necessarily decrease during charge/discharge cycling. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use as much of the lithium as possible, including stripping to thicknesses much less than 200 µm.
Regarding claim 32, Jang discloses a weight ratio of Al2O3:binder of 4, which falls within the range of the instant claim (Jang 4. Experimental Section).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of Huang and Ares as evidenced by C805 and the instant specification as applied to claim 1 above, and further in view of Ren et al. ("Systematic Optimization of Battery Materials: Key Parameter Optimization for the Scalable Synthesis of Uniform, High-Energy, and High Stability LiNi0.6Mn0.2Co0.2O2 Cathode Material for Lithium-Ion Batteries," Applied Materials and Interfaces 9(41) pp. 35811-35819, September 2017).
Regarding claim 26, Alu C 805 has a specific surface area of 100 m2/g and a primary particles size of 13 nm, each of which falls within the ranges of the instant claim, and an aggregate particle size of at least 26 nm (C805, Physico-chemical Data table), which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select any appropriate aggregate particle size in this range, including values within the range of the instant claim.
Modified Jang does not teach any particular span for the particles. Ren is directed to optimizing battery materials (Ren Abstract). Ren teaches that a span of about 1.2 implies that the particles were homogeneously and uniformly synthesized (Ren p. 35814, last full paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select a span of about 1.2, which falls within the range of the instant claim, to ensure homogeneous and uniformly synthesized particles.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of Huang and Ares as evidenced by C805 and the instant specification as applied to claim 1 above, and further in view of Lee et al. (US 2018/0166743 A1) and Amatucci et al. (US 2018/0309093 A1).
Regarding claim 29, modified Jang does not teach the use of PEO. Amatucci is directed to a lithium-ion battery (Amatucci claim 8), and Lee is directed to an improved electrolyte for lithium-ion batteries (Lee [0004]). Modified Jang teaches that PVdF-HFP is useful because it is known as a binder for electrodes and electrolytes (Jang Introduction. p. 2). Amatucci teaches that both PVdF-HFP and PEO are useful as binders for electrodes (Amatucci [0036]), and Lee teaches that both PVdF-HFP and PEO are useful as binders for electrolytes (Lee [0059]). PVdF-HFP and PEO are therefore art-recognized equivalents for the same purpose, and substituting equivalents known for the same purpose is prima facie obvious (MPEP 2144.06 II). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use any conventional binder for the coating of modified Jang, including PEO.
Claim(s) 33 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of Huang and Ares as evidenced by C805 and the instant specification as applied to claim 30 above, and further in view of Esken et al. (WO 2018/149834 A1; with reference to US 2020/0010367 A1 as a direct English translation).
Regarding claim 33, modified Jang does not teach a particle with the claimed properties. Esken is directed to a lithium-ion battery (Esken claim 35). Huang teaches that the material should be nano-sized alumina, and the Aeroxide Alu C used by Huang is one of a group of commercially available nano-sized alumina all known to be useful for lithium-ion batteries (see Esken [0028]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use any commercially available nano-sized alumina, including Aeroxide Alu 130, in the coating of modified Jang. Aeroxide Alu 130 has a BET surface area of 130 m2/g and an average primary particle size of 15-25 nm, each of which falls within the ranges of the instant claim, and a crystal structure of beta and gamma alumina (Table 1 of the instant specification).
Regarding claim 34, the binder is PVdF-HFP (Jang 4. Experimental Section).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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/J.A.C/ Examiner, Art Unit 1722
/ANCA EOFF/ Primary Examiner, Art Unit 1722
