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 .
Response to Amendment, Claim Status, and Other Notes
The amendment filed 22 July 2025 has been entered. Claims 14 and 15 have been added. Claims 1, 2, 4–9, and 11–15 are pending in the application. The paragraph numbers cited in this Office Action in reference to the Instant Application are referring to the paragraph numbering of the PGPub of the Instant Application. See US 2024/0006600 A1.
Claim Objections
Claims 4–7, 11, and 12 are objected to because of the following informality: “lithium metal battery” in the preamble of each claim should read “lithium metal battery cell” in order to be consistent with the preambles of the claims upon which they depend. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, Claim 4 fails to further limit the subject matter of Claim 1, as it can be understood from the Instant Specification ([0031]–[0034] and FIG. 5–7) as well as the Examiner’s own calculations (using Eformation values for 1%/eV of Li99A of –0.016 eV, –0.005 eV, –0.0195 eV, and –0.028 eV when A is Au, Mg, Pt, and Si, respectively, as determined from FIG. 5) that any metal additive of Claim 1 (i.e. Au with a particle size of < 70 nm, Mg with a particle size of < 138 nm, Pt with a particle size of < 52 nm, and Si with a particle size of < 2 nm) will fulfill the limitations of Claim 4. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 4–8, and 11–15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2023/0318076 A1) in view of Wu et al. (US 2022/0209218 A1).
Regarding Claims 1, 8, and 13, Kim discloses a lithium metal battery cell (see all-solid-state battery, [0042]–[0044], FIG. 1 and 2) comprising:
an electrolyte (see solid electrolyte layer 30, [0042], FIG. 1 and 2); and
an anode comprising:
an anode current collector (see anode current collector 10, [0042], FIG. 1 and 2); and
a composite interlayer (see intermediate layer 20, [0042], FIG. 1 and 2) formed on the anode current collector (10) ([0042], [0074]) between the anode current collector (10) and the electrolyte (30) ([0042], [0074], FIG. 1 and 2), the composite interlayer (20) consisting of conductive carbon (see carbon material, [0056], which can be furnace black, acetylene black, or Ketjen black, [0057]; one of ordinary skill will understand that furnace black, acetylene black, and Ketjen black are well-known forms of conductive carbon) and one or more metal additive selected from the group consisting of Au, Pt, and Si ([0058]), the composite interlayer configured to promote dense lithium deposition in the anode during charging ([0044]; one of ordinary skill in the art will understand that a layer including lithium metal as disclosed in [0044] represents a dense form of lithium deposition).
Kim does not disclose wherein the one or more metal additive in the composite interlayer is Mg, instead disclosing that the metal is one capable of alloying with lithium, and may be one or more selected from the group consisting of gold (Au), platinum (Pt), palladium (Pd), silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn) ([0056], [0058]).
Wu teaches a lithium metal battery cell (see lithium ion battery 100, [0019], [0046], FIG. 3; note that [0024] and [0026] teach that the active layer of the negative electrode can consist of lithium metal, thus making the battery a lithium metal battery) comprising: an electrolyte (see electrolyte liquid 60, [0046], FIG. 3); and an anode (see negative electrode 10, [0024], FIG. 1–3) comprising: an anode current collector (see current-collecting layer 16, [00042], FIG. 2–3); and a composite interlayer (see composite layer 14, [0024], FIG. 1–3), the composite interlayer comprising conductive carbon (see lithiophilic nanoparticle, [0027], which can include lithiophilic conductive carbon material nanoparticle, [0028]) and one or more metal additive (see metal nanoparticle, [0027]) selected from the group consisting of silver (Ag), gold (Au), tin (Sn), zinc (Zn), and magnesium (Mg) ([0034]–[0036] and Table 2), the composite interlayer configured to promote dense lithium deposition in the anode during charging ([0036]). Wu teaches ([0034], Table 2) that Mg nanoparticle is apt to form an alloy with lithium as it has a favorable standard Gibbs free energy of reaction of less than 0.
Kim and Wu are analogous to the claimed invention as they are in the same field of battery cells capable of cycling lithium. Furthermore, KSR Rationale B (MPEP § 2141) states that it is obvious to perform “simple substitution of one known element for another to obtain predictable results”. It therefore would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention that the metal additive selected from the group consisting of Au, Pt, and Si, as disclosed by Kim, could be substituted with Mg, as taught by Wu, which also favorably alloys with lithium and therefore would be expected to achieve similar results. As such, one of ordinary skill in the art would have found it obvious to modify the composite interlayer of Kim such that the one or more additive is selected from the group consisting of Au, Pt, and Si as disclosed by Kim, as well as Mg, as taught by Wu.
Modified Kim does not explicitly disclose wherein the one or more metal additive satisfies the following formula:
η
L
i
_
d
e
p
o
_
e
f
f
=
–
432.76
*
E
f
o
r
m
a
t
i
o
n
e
V
+
0.0724
*
R
n
m
+
2.7824
wherein
η
L
i
_
d
e
p
o
_
e
f
f
is lithium deposition overpotential and has a value of 0 mV to < 15 mV; R is particle diameter of the metal additive; and
E
f
o
r
m
a
t
i
o
n
e
V
is formation energy at 1%/eV of Li99A, wherein A is one of the one or more metal additive (Claims 8 and 13).
However, it can be understood from the Instant Specification ([0031]–[0034] and FIG. 5–7) as well as the Examiner’s own calculations (using Eformation values for 1%/eV of Li99A of –0.016 eV, –0.005 eV, –0.0195 eV, and –0.028 eV when A is Au, Mg, Pt, and Si, respectively, as determined from FIG. 5) that the above formula will be satisfied when R is < 70 nm for Au, < 138 nm for Mg, < 52 nm for Pt, and < 2 nm for Si (Claims 1 and 13).
Kim does not explicitly disclose wherein a particle size of the one or more metal additive is < 70 nm for Au, < 138 nm for Mg, < 52 nm for Pt, and < 2 nm for Si. Wu teaches ([0037]) that the particle size of the metal additive is 0.1 nm to 70 nm (note that this disclosed range overlaps with the claimed ranges for each of Au, Mg, Pt, and Si) in order to ensure that lithium nucleation sites can be formed uniformly on the surface of the anode interlayer, such that lithium deposition through the alloying reaction is more uniform and dendrite growth and volume swelling are inhibited. Note that when the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP § 2144.05.I).
A person of ordinary skill in the art prior to the effective filing date of the claimed invention would have thus found it obvious to select the overlapping portions of the ranges for the particle size of the one or more metal additives with a reasonable expectation that such selection would successfully result in an anode interlayer with lithium nucleation sites that are formed uniformly, such that lithium deposition through the alloying reaction is more uniform and dendrite growth and volume swelling are inhibited.
Since modified Kim, as described above, thus discloses wherein a particle size of the one or more metal additive is 0.1 ≤ R < 70 nm for Au, 0.1 ≤ R ≤ 70 nm for Mg, 0.1 ≤ R < 52 nm for Pt, and 0.1 ≤ R < 2 nm for Si, which fall within the ranges of < 70 nm for Au, < 138 nm for Mg, < 52 nm for Pt, and < 2 nm for Si described above, one of ordinary skill in the art will understand that modified Kim discloses for all of the above metal additives wherein the one or more metal additive satisfies the following formula:
η
L
i
_
d
e
p
o
_
e
f
f
=
–
432.76
*
E
f
o
r
m
a
t
i
o
n
e
V
+
0.0724
*
R
n
m
+
2.7824
wherein
η
L
i
_
d
e
p
o
_
e
f
f
is lithium deposition overpotential and has a value of 0 mV to < 15 mV; R is particle diameter of the metal additive; and
E
f
o
r
m
a
t
i
o
n
e
V
is formation energy at 1%/eV of Li99A, wherein A is one of the one or more metal additive.
Regarding Claim 4, modified Kim discloses the lithium metal battery cell of Claim 1. Modified Kim discloses wherein the one or more metal additive satisfies formula I:
η
L
i
_
d
e
p
o
_
e
f
f
=
–
432.76
*
E
f
o
r
m
a
t
i
o
n
e
V
+
0.0724
*
R
n
m
+
2.7824
wherein
η
L
i
_
d
e
p
o
_
e
f
f
is lithium deposition overpotential and has a value of 0 mV to < 15 mV; R is particle diameter of the metal additive; and
E
f
o
r
m
a
t
i
o
n
e
V
is formation energy at 1%/eV of Li99A, wherein A is one of the one or more metal additive as set forth in the rejection of Claim 1 above.
Regarding Claims 5 and 11, modified Kim discloses the lithium metal battery cell of Claims 1 and 11. Kim further discloses wherein the electrolyte (30) is a solid electrolyte ([0042], [0061]).
Regarding Claims 6 and 12, modified Kim discloses the lithium metal battery cell of Claims 1 and 8. Kim further discloses wherein the electrolyte (30) is a gel electrolyte (see polymer electrolyte, [0061], which can include a gel polymer electrolyte, [0063]).
Regarding Claim 7, modified Kim discloses the lithium metal battery cell of Claim 1. Kim further discloses wherein the lithium metal battery cell of Claim 1 is further comprising a cathode (see cathode active material layer 40, [0042], FIG. 1 and 2) and a cathode current collector (see cathode current collector 50, [0042], FIG. 1 and 2).
Regarding Claim 14, modified Kim discloses the lithium metal battery cell of Claim 1. Modified Kim further discloses wherein the one or more metal additive in the composite interlayer is Mg as set forth in the rejection of Claim 1 above.
Regarding Claim 15, modified Kim discloses the lithium metal battery cell of Claim 1. Modified Kim further discloses wherein the one or more metal additive in the composite interlayer is Si as set forth in the rejection of Claim 1 above.
Claims 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2023/03180076 A1) in view of Wu et al. (US 2022/0209218 A1) as applied to Claims 1 and 8 above, and further in view of Yan et al. (Yan, K.; Lu, Z.; Lee, H.-W.; Xiong, F.; Hsu, P.-C.; Li, Y.; Zhao, J.; Chu, S.; Cui, Y. Selective deposition and stable encapsulation of lithium through heterogeneous seeded growth, Nature Energy, 1, article number: 16010, published 22 February 2016).
Regarding Claims 2 and 9, modified Kim discloses the lithium metal battery cell of Claims 1 and 8, but does not explicitly disclose wherein the one or more metal additive in the composite interlayer is a metal that forms a solid solution with lithium metal. However, Au and Pt are known to form solid solutions with lithium metal, as evidenced by Yan (p. 2 ¶ “To understand the difference…”, p. 2 FIG. 1d, and p. 3 ¶ “To confirm the hypothesis…”).
Response to Arguments
Applicant’s arguments filed 22 July 2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
However, while it is moot, the Examiner does wish to address the argument regarding Claims 1 and 13 (p. 6 ¶ 3 of Remarks dated 22 July 2025) which implies that the claimed particle diameter ranges achieve unexpected results relative to the particle diameter ranges disclosed by the prior art. This argument directed to unexpected results is not persuasive, because arguments presented by the Applicant cannot take the place of evidence in the record In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor at least one joint inventor (see MPEP § 716.01(c).II). Furthermore, the comparison made by Applicant is not comparing the claimed subject matter with the closest prior art, as the new grounds of rejection differs from the prior grounds of rejection and no longer utilizes the reference Kim et al. (US 2020/0373613 A1). Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (see MPEP § 716.02(d).II). In the instant case, Applicant has not provided any results to suggest that lithium deposition overpotentials for the metal additives and their associated particle sizes achieve unexpectedly superior results over metal additives calculated to have lithium deposition overpotentials outside the range of 0 to < 15 mV. Instead, Applicant discloses only that “performance will improve using materials having a lower predicted overpotential and a higher formation energy with lithium”. As such, Applicant has not illustrated the criticality of the claimed particle size ranges for the metal additives.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA MARIE FEHR, Ph.D. whose telephone number is (571)270-0860. The examiner can normally be reached Monday - Friday 9:00 AM - 5:00 PM EST.
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725