DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. 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
3. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/27/2026 has been entered.
Response to Amendment
4. In response to the amendment received on 5/27/2026:
Claims 1 and 5-19 are pending in the current application. Claim 1 is amended, Claims 2-4 are cancelled, and Claims 6-18 stand withdrawn.
The affidavit under 37 CFR 1.132 filed 5/27/2026 is insufficient to overcome the rejection of claim 1 based upon Chu US Patent 6,402,795 because: The affidavit is not commensurate in scope with the claims. Please see the response to arguments section below. The affidavit is sufficient to show that the 112a rejection can be withdrawn.
The previous prior art-based rejections have been maintained in light of the amendment and are updated only to reflect claim modifications. No new prior art is introduced. All changes made to the rejection are necessitated by the amendment.
Claim Interpretation
5. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 103
6. Claims 1 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Chu US Patent 6,402,795 in view of Liao US PG Publication 2014/0170478.
Regarding Claims 1 and 19, Chu teaches a lithium secondary battery (cell which is rechargeable, col 12, lines 53-54) 310 comprising a negative electrode 10', a positive electrode 318/320, and an electrolyte (col 11, lines 33-59, meeting Claim 19), the negative electrode 314/312 comprising a current collector 14/312, a negative active material layer positioned on the at least one surface of the current collector 14/312 and comprising a lithium metal layer 16 and a coating layer (wetting layer) 15/313 (resulting in a plurality of layers making the negative active material layer), said coating layer having thickness 5 nm to 100 nm (col 6, lines 0053-0059), which overlaps the claimed range of 10 nm to 250 nm, consisting of magnesium as a metal seed (col 6, lines 32-67), and a lithium layer positioned on the coating layer 15/313 since lithium is plated onto the coating layer 15/313 and so it is positioned on the coating layer 15/313 and wherein the coating layer is formed by depositing magnesium (containing no lithium) via sputtering (col 6, lines 60-67) prior to positioning of the lithium metal layer (see entire disclosure and especially Figs. 2, 4; col 4, line 62 - col 5, line 42, col 6, lines 32-67, col 8, lines 3-13, col 11, lines 33-59, col 12, lines 53-54, col 16, lines 52-63).
Regarding the overlapping range of coating layer thicknesses taught by Chu, 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range."). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Although Chu does not specifically call the Mg of the wetting layer a “metal seed”, the Office notes that Applicant’s use of the term “metal seed” describes an intended use for the metal material of which the prior art is capable. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Chu does not specifically disclose the total thickness of the negative active material layer. However, in the same field of endeavor of lithium battery design, Liao teaches that it is important to design (optimize) the anode to have a thickness that provides the battery with desired properties, such as excess amount of lithium desired, cycle life, thickness of the cathode, and that a good range of anode thickness can be about 2 to 100 microns and that a minimally thick current collector (less than a micron thick) is used advantageously (see para 0048) and teaches that the current collector thickness can be small to improve the cell’s energy density (para 0120) (see e.g. paras 0048, 0120-0125). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the negative active material layer of Chu to have a thickness of 1 µm to 100 µm because Liao teaches that the thickness of a negative electrode (including the active material layer) is optimized to provide the battery with desired properties, such as excess amount of lithium desired, improved cycle life, etc. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
7. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Chu US Patent 6,402,795 in view of Liao US PG Publication 2014/0170478, as applied to Claim 1, and further in view of Cho US PG Publication 2002/0182488.
Regarding Claim 5, Chu modified by Laio discloses the claimed negative electrode as described in the rejection of Claim 1, which is incorporated herein in its entirety. Chu discloses wherein the negative active material layer further comprises a film (protective layer) positioned on a surface of the negative active material layer and formed of e.g. lithium-conductive amorphous or glass materials such as a halide of the ion to which the glass is conductive, e.g. LiCl or LiBr or LiI (see e.g. col 9, lines 5-25, col 10, lines 28-67) but Chu modified by Laio fails to specifically disclose wherein the film positioned on a surface of the negative active material layer comprises at least one material selected from the group consisting of Li-N-C-H-O-based ionic compound, Li-P-C-H-O-based ionic compound, and LiF. However, in the same field of endeavor of Li battery design, Cho teaches that providing a LiF-based coating layer on the surface of a Li metal-based anode for protection of the lithium anode surface with enhanced adhesion, improved interfacial stability due to suppression of dendrite growth on the anode surface and with extended lifetime due to the improved energy density and cycling characteristics (see e.g. paras 0008-0011, 0028, 0038). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to form/position a LiF film on a surface of the Li metal-based anode negative active material layer of Chu because Chu modified by Laio teaches that this protects lithium anode surface via enhanced adhesion, improved interfacial stability due to suppression of dendrite growth on the anode surface and with extended lifetime due to the improved energy density and cycling characteristics, and Chu appreciates the use of alkali halides that correspond with the alkali metal that is conducted by the protective layer.
Response to Arguments
7. Applicant's arguments filed 5/27/2026 directed to the claimed thicknesses of the active material layer and the coating layer have been fully considered but are not persuasive. Arguments are addressed in part in the modified rejection above, and further:
Applicant argues that the claimed invention produces unexpected results based on a synergistic effect of the claimed thin active material layer (having a thickness of 5 micron to 30 micron) combined with the supposedly claimed thick Mg coating layer, e.g. a coating layer having thickness of from 100 nm to 250 nm or 250 nm to 500 nm, but this argument is not commensurate in scope with the claim. Claim 1 recites a Mg coating layer having a thickness of “0.01 µm to 250 nm” which is from 10 nm to 250 nm. A “thick” Mg coating layer according to Applicant’s own reference to “thick”, e.g. 100 nm to 250 nm or 250 nm to 500 nm, is not claimed since the claimed range encompasses the supposedly “thinner” coating values taught by the prior art, e.g. 10 nm to 100 nm. The fact that Chu’s range includes thicknesses of 5 nm up to 10 nm as values outside of the claimed range does not render the invention patentable since Chu’s range otherwise falls entirely within the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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/LISA S PARK/Primary Examiner, Art Unit 1729
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