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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-20 are pending in the application. Claims 1-8 and 16-20 are withdrawn. Claims 9-15 are presently examined.
Response to Amendment / Arguments
The amendment filed 12/8/2025, in response to the office action mailed 6/6/2025, has been entered. Applicant's claim amendment and arguments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive.
Applicant amended claim 9 as follows:
“the first plurality of non-active ceramic particles and the second plurality of non-active ceramic particles are configured to collectively provide ion conduction channels through the electrode”
Applicant argues that Yao doesn’t teach particles “configured to” provide ion conduction channels, and that that “configured to” changes the claim to mean that the particles “are designed specifically to provide ion conduction channels through the electrode” (Remarks pp. 7-8). As discussed in the Claim Interpretation section below, this mental process is not patentable subject matter. This claim limitation is only interpreted as to whether or not the prior art has the structural feature.
The intent or desire of the prior art authors / inventors is irrelevant for patent examination. Note, however, that Yao teaches porous ceramic particles “enhances ion conductivity” (paragraph 83). Thus, even if “configured to” in claim 9 is interpreted to require an intent to form ion conductivity channels, then Yao still fulfills this requirement.
As discussed in the 35 U.S.C. 103 section below, and in the 6/6/2025 office action, the above claim limitation would have been obvious based on the teachings of Yao, Wang, and common knowledge of those of ordinary skill in the art.
Applicant next argues that “there is no objective reason that would lead a person of ordinary skill to combine these references” (Remarks p. 9). Examiner disagrees.
As discussed in the 35 U.S.C. 103 section below, and in the 6/6/2025 office action, Wang is directed to an energy storage device with a small, light, and cost effective separator (paragraph 9). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Yao’s separator to include ceramic particles adhered together by a binder, as taught by Wang, for an energy storage device with a small, light, and cost effective separator.
Furthermore, it was well-known to one of ordinary skill in the art, before the effective filing date of the invention, that separators need ion conduction channels. Therefore, it would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to have combined Wang’s teaching of a separator including ceramic particles with Yao’s teaching of porous ceramic particles, in order to provide or increase ion conduction channels in the separator.
Applicant next argues that “nor is there any evidence that the resulting combination would have been predictable from the teachings of these references” (Remarks p. 9). Examiner disagrees. It seems obvious and predictable that particle porosity can allow or improve ion conduction.
Applicant next argues:
“One of ordinary skill would not have been motivated to provide a first plurality of non-active ceramic particles and a second plurality of non-active ceramic particles configured to collectively provide ion conduction channels through the electrode, as porosity in the separator is already provided by the porous polymer.”
Examiner disagrees. One skilled in the art with both the Yao and Wang references would have the concept of porous ceramic particles. It would have been within the ability of one skilled in the art to apply the principle of ceramic porosity, which was already in the electrode, to the ceramic particles of the separator. Doing so would have increased ionic conductivity through the separator. Thus, even with polymer porosity, it would have been desirable to also have ceramic particle porosity for increased and/or more reliable porosity.
Applicant also argues:
Furthermore, Wang teaches that ‘during thermal runaway, the polymer lines are melted and fused together, reducing porosity in the layer and thus slow down Li-ion transport and the associated electrochemical reactions.’ (Wang para. [0039]). One of ordinary skill in the art would have not been motivated to provide a second plurality of non-active ceramic particles configured to collectively provide ion conduction channels through the electrode along with a first plurality of non-active ceramic particles, as this would negate the benefits of the polymer melting during thermal runaway.
Examiner disagrees. First, Wang’s design for thermal runaway (paragraph 39) is a different embodiment than the embodiment (paragraphs 35-36, 50) referred to by the examiner. Second, even if those different embodiments were combined, melted polymer would also close off pores in embedded porous ceramic.
Claim Interpretation
Applicant amended claim 9 as follows:
“the first plurality of non-active ceramic particles and the second plurality of non-active ceramic particles are configured to collectively provide ion conduction channels through the electrode”
Applicant argues that “configured to” changes the claim to mean that the particles “are designed specifically to provide ion conduction channels through the electrode” (Remarks p. 7).
35 USC § 101 provides the law for this issue:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
A desire or intent to design for an objective is not a “process, machine, manufacture, or composition of matter”. This desire or intent is not patentable subject matter. The phrase “configured to” in present claim 9 does not affect the claim for examination. The prior art is evaluated as to whether or not its particles provide ion conduction channels through the electrode. The prior art is NOT evaluated as to whether or not its authors / inventors intended or desired such ion conduction channels.
Claim Rejections - 35 USC § 103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over US20200020937A1 (Yao) in view of US20110217585A1 (Wang), together “modified Yao”.
With regard to claim 9, Yao teaches the following claim limitations:
An electrode comprising:
an active material layer (paragraph 82; figure 6: first layer 612) layered onto and directly contacting a current collector substrate (paragraph 82; figure 6: current collector 602), the active material layer comprising a first plurality of active material particles (paragraph 83; figure 6: active material 636) adhered together by a first binder (paragraph 50), wherein the active material layer (612) is electrochemically active and electrically conductive (paragraph 37: active material 636 is called “active”, not “non-active”);
a hybrid layer (paragraph 82; figure 6: second layer 614) layered onto and directly contacting the active material layer (612), the hybrid layer (614) comprising a second plurality of active material particles (paragraph 83; figure 6: active material 634) mixed with a first plurality of non-active ceramic particles (paragraph 83; figure 6: non-active material 632 is ceramic) and adhered together by a second binder (paragraph 50), wherein the hybrid layer (614) is electrochemically active and electrically conductive (paragraph 37: active material 634 is called “active”, not “non-active”); and
a separator layer (paragraph 82; figure 6: separator 622) layered onto and directly contacting the hybrid layer (614) …the separator layer is electrochemically inactive and electrically non-conductive (standard separator function)
Although Yao teaches a separator 622, Yao fails to teach the following separator characteristics, which are taught by Wang:
the separator layer comprising a second plurality of non-active ceramic particles adhered together by a third binder (paragraphs 35-36, 50; claims 13-14: ceramic particles in pores of a porous polymer)
Wang is directed to an energy storage device with a small, light, and cost effective separator (paragraph 9). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Yao’s separator to include ceramic particles adhered together by a binder, as taught by Wang, for an energy storage device with a small, light, and cost effective separator.
Claim 9 also recites:
the first plurality of non-active ceramic particles and the second plurality of non-active ceramic particles are configured to collectively provide ion conduction channels through the electrode
The present specification teaches that this may be achieved by porosity in the ceramic particles (page 7, lines 21-25). Yao teaches use of porous ceramic particles for ionic conduction channels (paragraph 83, see also paragraphs 4-5, 86, 100-101 and claims 1 & 11). Yao’s porous ceramic particles are in Yao’s second layer 614.
Yao doesn’t teach porous ceramic particles in the separator. Wang teaches ceramic particles in the separator, but fails to teach that they are porous. It was well-known to one of ordinary skill in the art, before the effective filing date of the invention, that separators need ion conduction channels. Therefore, it would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to have combined Wang’s teaching of a separator including ceramic particles with Yao’s teaching of porous ceramic particles, in order to provide, increase, or improve ion conduction channels in the separator.
With regard to claim 10, modified Yao teaches the limitations of claim 1 as described above. Yao also teaches the following claim 10 limitation:
the first plurality of non-active ceramic particles provide ion conduction channels between the separator layer and the active material layer (paragraph 83; figure 6: “non-active ceramic material 632 includes ceramic particles that are microporous…, facilitating a greater number of ionic conduction channels through the second layer into the first layer”)
With regard to claim 11, modified Yao teaches the limitations of claim 9 as described above. Yao also teaches the following claim 11 limitation:
the active material layer and the hybrid layer further comprise conductive additives (paragraph 50)
With regard to claim 12, modified Yao teaches the limitations of claim 9 as described above. Yao also teaches the following claim 12 limitation:
the first plurality of non-active ceramic particles have sizes on the same order of magnitude as the second plurality of active material particles (paragraph 83: “Including porous, non-active ceramic particles having a similar size to the active particles in the second layer… enhances ion conductivity”; see also paragraphs 4, 52, & 69)
With regard to claim 13, modified Yao teaches the limitations of claim 9 as described above. Yao also teaches the following claim 13 limitation:
the first plurality of non-active ceramic particles are microporous, and are configured to provide ion conduction channels through the hybrid layer (paragraph 83: “ceramic material 632 includes ceramic particles that are microporous… facilitating a greater number of ionic conduction channels”)
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over US20200020937A1 (Yao) and US20110217585A1 (Wang), as applied to claim 1, and further in view of US10727464B1 (US464).
Modified Yao teaches the limitations of claim 9 as described above. Modified Yao, however, fails to teach the following limitations of claims 14-15, which is taught by US464:
Claim 14
a first interlocking region disposed between and adhering the active material layer and the hybrid layer, wherein first fingers of the active material layer interlock with second fingers of the hybrid layer (column 11, lines 40-52; figure 4: second interlocking region 310 includes a third plurality of fingers 316 and a fourth plurality of fingers 318)
Claim 15
a second interlocking region disposed between and adhering the hybrid layer and the separator layer, wherein third fingers of the hybrid layer interlock with fourth fingers of the separator layer (column 11, lines 27-39; figure 4: first interlocking region 308 includes a first plurality of fingers 312 and a second plurality of fingers 314)
US464 teaches use of an interlocking region for adhesion between the layers (column 1, lines 48-50). US464 also states that the interlocking region can “reduce interfacial resistance and increase ion mobility through the electrode” (column 4, lines 34-38).
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to have an interlocking region between Yao’s first layer 612 and second layer 614, and to have an interlocking region between Yao’s second layer 614 and modified Yao’s separator, as taught by US464, for adhesion between the layers, to reduce interfacial resistance, and to increase ion mobility.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.G.W./Examiner, Art Unit 1721
/SADIE WHITE/Primary Examiner, Art Unit 1721