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 Arguments
Applicant's arguments filed 12/26/25 have been fully considered but they are not persuasive. The Shih and Li references still anticipates at least the independent claims but the rejections have been modified to address the amendments.
Applicant’s arguments on pages 6-7 of the Remarks directed to the anticipation of independent claims 21 and 13 in view of Shih simply state that “Shih merely discloses mismatching cells.” It is unclear why this one assertion obviates the rejections of record. The cells of the instant claims are “mismatched.” Further, the rejections have been obviated the address the amended limitations. These modified rejections are not addressed by the Remarks, including those for claim 18.
The arguments directed to claims 13 and 17 are moot since a new reference is used to reject the new limitations.
The arguments directed to the USC 103 rejections rely on ostensible deficiencies in the base references that are not maintained.
An updated search has yielded a new double patenting rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 11 of U.S. Patent No. 12,451,553 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite stacked cells with a pair of endplates, wherein the cells have different thicknesses. The instant claims recite that the electrodes or separators have different thicknesses which would mean cells with different thicknesses.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21, 4, 7, 9, 11, 12, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shih (US 2014/0087227 A1).
Regarding claims 21 and 4, Shih discloses an apparatus comprising: a plurality of outer cells 22a and an inner cell 22b to form a stack 20 (paragraph 32); a pair of endplates 21 arranged to compress the stack (paragraph 93), wherein the electrodes of 22a have a different thickness than the electrode of 22b (paragraph 48). It should be noted that separators are inherent features of a battery cell as they are necessary. Paragraphs 41 and 42 of the instant specification state clearly that the ability to accommodate higher operating temperatures or pressures is a direct result of electrode thickness.
Regarding claims 21 and 7, Shih discloses an apparatus comprising: a plurality of outer cells 22a and an inner cell 22b to form a stack 20 (paragraph 32); a pair of endplates 21 arranged to compress the stack (paragraph 93), wherein the electrodes have different loading (paragraph 42). It should be noted that separators are inherent features of a battery cell as they are necessary. Paragraphs 41 and 42 of the instant specification state clearly that the ability to accommodate higher operating temperatures or pressures is a direct result of loading level.
Regarding claim 9, Shih discloses that the capacity of one cell is 10-20 less than the other (paragraph 60).
Regarding claims 11 and 12, Shih discloses lithium-ion batteries for space systems (paragraphs 2 and 3).
Regarding claim 18, Shih discloses an apparatus comprising: a plurality of outer cells 22a on opposite sides of an inner cell 22b to form a stack 20 (paragraph 32), wherein the electrodes of 22a have a different composition than the electrode of 22b (paragraph 59). Paragraph 25 of the instant specification state clearly that the ability to accommodate different operating conditions is a direct result of compositions.
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (US 2022/0416330 A1).
Li discloses an apparatus comprising a first cell 5a and a plurality of second cells 5b with separators having different porosities (paragraphs 18 and 19); and a plurality of endplates arranged to compress the stack (paragraph 74).
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park (US 2015/0132626 A1).
Park discloses an apparatus comprising: second cells 20, 30 and a first cell 40 between the second cells (see Figure 5) with the endplates of case 10 in contact with the assemblies (paragraph 101), wherein the separators have different thicknesses from one another (paragraph 38). The amount of pressure applied to each cell is considered intended use; the instant cells would experience pressure in the same manner as the disclosed invention for the reasons give in the instant specification.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Shih as applied to claim 21 above, and further in view of Modjtahedi (US 2023/0352741 A1).
Shih discloses that the cathode is at least about 50 microns (paragraph 48) but that the anode is 0.1 to 20 microns (paragraph 88). Changes in size/proportion are not grounds for patentability, however. See MPEP 2144.04 IV A. Modjtahedi—in an invention for batteries stack—discloses anodes in the range 10-70 microns for optimal pore/size ratio (paragraph 107). It would have been obvious to one having ordinary skill in the art at the time of invention to size the anode of Shih to 50 microns since the cathode of Shih is this size and Modjtahedi discloses anodes of this size given that size/proportion are not grounds for patentability.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Shih as applied to claim 9 above, and further in view of Huang (US 2021/0043922 A1).
Shih discloses that the capacity of one cell is 10-20 less than the other (paragraph 60) but not the actual amount of loading. Huang—in an invention for solid state battery packs—discloses that the anode layer can have a loading range of 6.5-10 mg/cm2 (paragraph 28) and the cathode a range of 12-23 mg/cm2 (paragraph 29). Huang discloses that the batteries are composed to achieve higher specific capacity, stable cycle life, and enhanced stability (paragraph 24) and these values are used to achieve the targets (paragraph 54). It would have been obvious to one having ordinary skill in the art at the time of invention to use the loading values available in Huang to optimize the batteries of Shih.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 13 above, and further in view of Chen (US 2024/0372212 A1).
Li discloses separators with different properties but not the claimed thicknesses. Chen—in an invention for a battery stack with a plurality of separators—discloses that the first and second separators can each range from 1 to 200 microns (paragraph 32). Chen discloses that separators with different properties can be tuned to the differences between the cathodes and anodes to optimize results (paragraph 29). It would have been obvious to one having ordinary skill in the art at the time of invention to size the separators of Li to the known ranges taught in Chen to optimize results.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Park as applied to claim 13 above, and further in view of Li.
Park discloses that the separators are porous (paragraph 52) and have different thicknesses but not different porosities. Li—in an invention for multiple cells with different properties from one another—discloses that the permeability of one separator is 1-50% greater than the other to ensure the consistency of the kinetic performance of the first-type battery cell and the second-type battery cell, thereby facilitating further improvement of the power output characteristics of the battery module during long-term cycling process (paragraph 112). It would have been obvious to one having ordinary skill in the art at the time of invention to optimize the porosity of the separators of Park so as to improve the power output characteristics of the battery module as suggested by Li.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725
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