DETAILED ACTION
Introductory Notes
Any paragraph citation of the instant is in reference to the U.S. published patent application.
Applicant is encouraged to utilized double spacing in future claim sets.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/3/2026 has been entered.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “the negative electrode current collector having no lithium metal layer” furthermore the claim then states “a lithium metal laver is formed by way of charging the lithium metal secondary battery”. While it is recognized the instant states in [0021] that the battery “may have an initial state in which the negative electrode has no lithium metal layer” the same paragraph goes on to say “lithium metal is deposited to form a lithium metal layer on the negative electrode current collector” [0021]. As such it is unclear how the lithium metal secondary battery of claim 1, which encompasses a final product operational state (as opposed to a method of manufacture), comprises a negative electrode current collector that has no lithium metal layer AND has a lithium metal laver formed by way of charging the lithium metal secondary battery. Notably the applicant is attempting to claim both an intermediate product as well as a final product, leading to an indefinite situation.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PIAO (N. Piao et al., Countersolvent Electrolytes for Lithium-Metal Batteries. Adv. Energy Mater. 2020, 10, 1903568).
Regarding claim 1, PIAO discloses a lithium metal secondary battery, comprising: a positive electrode; a negative electrode current collector (“Experimental Section” beginning on page 7 details a functional battery including a lithium metal layer); a solid electrolyte layer between the positive electrode and the negative electrode current collector (“formation of a LiF-rich solid electrolyte interphase”, Abstract); and a porous body between the positive electrode and the solid electrolyte layer, the porous body being impregnated with an electrolytic solution (“Celgard 3501 separator was used in this study” per pg. 7, col. 2, para. 3),
the negative electrode current collector having no lithium metal layer (considering instant [0021], which states “lithium metal is deposited to form a lithium metal layer on the negative electrode current collector”, this limitation is being interpreted as the current collector has fabrication step wherein it is free of lithium metal; notably PIAO discloses the current collector is “aluminium” per pg. 6, col. 2, para. 1 and therefore in some step is free of lithium metal),
the positive electrode comprising: a positive electrode current collector; and a positive electrode material mixture layer comprising a lithium composite oxide, (“Experimental Section” beginning on page 7 details a functional battery including lithium composite oxide “LiNi0.6Mn0.2Co0.2O2 (NMC622)”),
the electrolytic solution comprising dimethyl carbonate and lithium bis(fluorosulfonyl)imide, wherein the molar ratio of dimethyl carbonate to lithium bis(fluorosulfonyl)imide is 1.0 or more and 3.0 or less (“the molar ratio of LiFSI to DMC increases from 1:12 (D1) to 1:1.5 (D7), corresponding to the electrolyte concentration increasing from 0.91 to 4.65 mol dm−3” page 2, col. 1, paragraph 2; as well as Figure 1 wherein D7, D6, and D5 correspond to 1:1.5, 1:2, and 1:3 respectively).
Regarding the limitation beginning “the lithium metal secondary battery being manufactured by a process … ” as well as “wherein a lithium metal layer is formed by way of charging the lithium metal secondary battery”, these are product-by-process limitation. MPEP § 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). PIAO discloses the final product itself in the form of a functioning battery with the claimed layers as well as a lithium metal layer, matching the instant. Furthermore, the instant does not describe any special structure obtained by in situ deposition. The instant gives a broad advantage of being “less likely to suffer from the growth of lithium metal dendrites during charge”, however it is not clear this can be attributed to the in situ deposition. Limiting dendrite growth is a common goal in the art and PIAO makes similar statements in multiple locations such as the Abstract as well as “altered Li+ coordination structure of the counter solvent electrolyte favors to form an LiF-rich SEI layer on Li metal, which suppresses Li dendrites” (pg. 7, col. 2, para. 1). Notably in PIAO this benefit is attributed to the electrolyte as well as the LiF layer and not to the method of manufacture of the lithium metal layer.
Regarding claim 5, PIAO disclose discloses the underlying structure of claim 1 which is the same as that instantly claimed, and therefore would be expected to share similar measured characteristics absent any clear and convincing evidence and/or arguments to the contrary. Examiner notes a molar ratio of 1, a ratio within the range of claim 1, would have a viscosity greater than 90 as shown by applicants measurement of a solution with a ratio of 1.5 having a viscosity of 89.4 (instant [0058]) and given the known inverse relationship of this ratio to viscosity, demonstrated by applicants measurement of a solution with a ratio of 2 having a viscosity of 37.9 (instant [0057]).
Furthermore, PIAO discloses the electrolytic solution has a viscosity of 90 mPa·s or less at 25° C (Figure 1 gives viscosity of less than 90 for at least samples D6 and D5 and sample D7 is approximately 90, the experimental section notes all the electrochemical measurements were conducted at 25 °C).
Regarding claim 6, PIAO disclose discloses the underlying structure of claim 1 which is the same as that instantly claimed, and therefore would be expected to share similar measured characteristics absent any clear and convincing evidence and/or arguments to the contrary.
Furthermore, PIAO discloses a Raman spectrum of the electrolytic solution has a first peak, a second peak, and a third peak, wherein the first peak is derived from unsolvated dimethyl carbonate, the second peak appears due to shift of the first peak caused by solvation of lithium ions from lithium bis(fluorosulfonyl)imide, the intensity ratio of the second peak to the first peak is 3.5 or more, and the third peak appears at 735 cm−1 or more due to shift of a lithium bis(fluorosulfonyl)imide-derived peak caused by concentration increase-induced solvation of lithium ions (Figure 2a provides the Raman spectra for a number of samples wherein at minimum D7 and D6, and potentially D5 as well, fully read on the limitation).
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.
Claims 1 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over PIAO in view of PARK (US 20200203757 A1, supplied with an IDS).
Regarding claim 1, PIAO discloses a lithium metal secondary battery, comprising: a positive electrode; a negative electrode current collector (“Experimental Section” beginning on page 7 details a functional battery including a lithium metal layer); a solid electrolyte layer between the positive electrode and the negative electrode current collector (“formation of a LiF-rich solid electrolyte interphase”, Abstract); and a porous body between the positive electrode and the solid electrolyte layer, the porous body being impregnated with an electrolytic solution (“Celgard 3501 separator was used in this study” per pg. 7, col. 2, para. 3),
the positive electrode comprising: a positive electrode current collector; and a positive electrode material mixture layer comprising a lithium composite oxide, (“Experimental Section” beginning on page 7 details a functional battery including lithium composite oxide “LiNi0.6Mn0.2Co0.2O2 (NMC622)”),
the electrolytic solution comprising dimethyl carbonate and lithium bis(fluorosulfonyl)imide, wherein the molar ratio of dimethyl carbonate to lithium bis(fluorosulfonyl)imide is 1.0 or more and 3.0 or less (“the molar ratio of LiFSI to DMC increases from 1:12 (D1) to 1:1.5 (D7), corresponding to the electrolyte concentration increasing from 0.91 to 4.65 mol dm−3” page 2, col. 1, paragraph 2; as well as Figure 1 wherein D7, D6, and D5 correspond to 1:1.5, 1:2, and 1:3 respectively).
Regarding the limitation beginning “the lithium metal secondary battery being manufactured by a process … ” as well as “wherein a lithium metal layer is formed by way of charging the lithium metal secondary battery”, PIAO discloses the final product itself in the form of a functioning battery with the claimed layers as well as a lithium metal layer, matching the instant. However, PIAO does not expressly teach the lithium metal layer is formed by way of charging the lithium metal secondary battery.
PARK is directed to a lithium secondary battery (Abstract) including LiFSI dissolved in DMC (Example 2 in [0140]) like PIAO.
PARK discloses “made of an anode-free battery and comprises lithium metal formed on a negative electrode current collector by charging” (Abstract).
PARK teaches “lithium secondary battery comprises the lithium metal formed in a state of being shielded from the atmosphere, so that the generation of a surface oxide layer (native layer) formed on the negative electrode according to the prior art does not occur fundamentally, thereby preventing the deterioration of the efficiency and life characteristics of the battery” (Abstract).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize the method of forming the lithium metal layer in a battery such as that of PIAO in order to improve efficiency and life characteristics.
Therefore, modified PIAO discloses a lithium metal layer is formed by way of charging the lithium metal secondary battery (as taught by PARK).
Regarding claim 5, modified PIAO discloses all the claim limitations as set forth above and PIAO further discloses the electrolytic solution has a viscosity of 90 mPa·s or less at 25° C (Figure 1 gives viscosity of less than 90 for at least samples D6 and D5 and sample D7 is approximately 90, the experimental section notes all the electrochemical measurements were conducted at 25 °C).
Regarding claim 6, modified PIAO discloses all the claim limitations as set forth above and PIAO further discloses a Raman spectrum of the electrolytic solution has a first peak, a second peak, and a third peak, wherein the first peak is derived from unsolvated dimethyl carbonate, the second peak appears due to shift of the first peak caused by solvation of lithium ions from lithium bis(fluorosulfonyl)imide, the intensity ratio of the second peak to the first peak is 3.5 or more, and the third peak appears at 735 cm−1 or more due to shift of a lithium bis(fluorosulfonyl)imide-derived peak caused by concentration increase-induced solvation of lithium ions (Figure 2a provides the Raman spectra for a number of samples wherein at minimum D7 and D6, and potentially D5 as well, fully read on the limitation).
Response to Arguments
Regarding art-based rejections, applicant’s arguments with respect to the claims have been considered but are not persuasive. On page 6 of the remarks, applicant notes the amendments to the lithium metal layer being formed by way of charging, then states “PIAO neither discloses nor suggests the above-described technical feature”. For the product claim of the instant, the method of manufacture has limited patentable weight. As to the statement that the instant has “an unexpected result that a lithium metal secondary battery that is less likely to suffer from the growth of lithium metal dendrites” and linking this to the method of manufacture, this argument is not persuasive. Limiting dendrite growth is a common goal in the art and PIAO makes similar statements in multiple locations such as the Abstract as well as “altered Li+ coordination structure of the counter solvent electrolyte favors to form an LiF-rich SEI layer on Li metal, which suppresses Li dendrites” (pg. 7, col. 2, para. 1). Notably in PIAO this benefit is attributed to the electrolyte as well as the LiF layer and not to the method of manufacture of the lithium metal layer.
In the interest of compact prosecution, a secondary rejection under 35 U.S.C. 103 specifically addressing the method of manufacture is presented above.
Conclusion
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/T.L.M./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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