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 and Claim Status
The amendment filed 4 August 2025 has been entered. Applicant’s amendments to the Specification and Claims have overcome each and every Objection and 35 U.S.C. 112 Rejection set forth in the Office Action mailed 6 May 2025. Claims 1–20 are pending in the application. Claims 11–20 are withdrawn from consideration. Note that
Specification
The disclosure is objected to because of the following informalities:
[0050] and [0051] of the Instant Specification refer to reference numeral 514-1 of FIG. 5 as “separator layer”. However, [0052] refers to reference numeral 514-1 of FIG. 5 as “anode active material”.
[0052] refers to reference numeral 516-1 as both “separator” and “first current collector”.
Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 516-1A and 516-1B. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Claim Objections
Claim 1 is objected to because of the following informality: “spaces” in line 11 should read “spaced” (see e.g. [0046] of the Instant Specification for support for this suggested correction). Appropriate correction is required.
Claims 2–10 are objected to as they depend upon Claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1–10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1, Claim 1 recites the claim element “a first conductive porous layer located on the first side of the first separator layer” and the claim element “porous current collectors”. The Instant Specification does not properly describe the subject matter of Claim 1, because the Instant Specification does not appear to describe any embodiment of the Instant Invention wherein both “a first conductive porous layer” (as recited in Claim 1) and “porous current collectors” (as recited in Claim 1) are present in the battery electrode at the same time as separate and discrete elements. The Instant Specification does recite these elements separately (e.g. [0005] and [0042], respectively), but there is no indication that these elements exist in the same described embodiment. For the purposes of this Office Action, the “a first conductive porous layer” and “porous current collectors” are being interpreted as separate and discrete.
Regarding Claim 5, Claim 1 further recites the limitation “wherein the active material layer includes one or more conductive paths arranged in the active material parallel to and spaced apart from porous current collectors, each of the one or more conductive paths including a porous conductive layer”, while Claim 5, which depends upon Claim 1, recites the limitation “the active material layer includes one or more conductive porous layers arranged between sublayers of the anode active material layer located between the first side and the second side of the active material layer”. The Instant Specification does not properly describe the subject matter of Claim 5, because the Instant Specification does not appear to describe any embodiment of the Instant Invention wherein both “one or more conductive paths” (as recited in Claim 1) and “one or more conductive porous layers” (as recited in Claim 5) are present in the battery electrode at the same time as separate and discrete elements. The Instant Specification does recite these elements separately (e.g. [0046] and [0019], respectively), but there is no indication that these elements exist in the same described embodiment. For the purposes of this Office Action, the “one or more conductive paths” and “one or more conductive porous layers” are being interpreted as referring to the same element.
Claims 2–4 and 6–10 are rejected under 35 U.S.C. 112(a) as they depend upon Claim 1.
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 1–7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2014/0306665 A1).
(Note: for rejections of Claims 1, 4, and 6, see also accompanying figures from the prior art with annotations added by the Examiner).
Regarding Claim 1, Kim discloses a battery electrode (see electrode structures 100A or 100B, i.e. cathode and anode 100A and 100B, [0080], FIG. 6, in combination with separators 500, [0081], FIG. 6; note that electrode assembly 300, [0073], FIG. 5 is representative of one active electrode layer 15a or 15b in FIG. 6 coated on one side of current collector 10a or 10b in FIG. 6, [0081]; note that annotated FIG. 5 and 6 below illustrate both when the battery electrode is an anode and when the battery electrode is a cathode) for an electrochemical cell (see battery 1000, [0079], FIG. 6) that cycles lithium ions ([0041]), comprising:
a first separator layer (see separator 500, [0081], FIG. 6) including a first side and a second side (FIG. 6);
a first conductive porous layer (see porous conductive network layer 60, [0074], FIG. 5) located on the first side of the first separator layer (FIG. 5 and 6);
an active material layer (see combination of second electric active material layer 50, [0074], FIG. 5, first porous conductive network layer 30, [0074], FIG. 5, first electric active material layer 20, [0074], FIG. 5, base porous conductive network layer 40, [0066], FIG. 5, and current collector 10, [0040], FIG. 5, which make up electrode structures 100A or 100B; note that for the purposes of Claim 6, the active material layer is further considered to include an additional separator layer and conductive porous layer) to cycle lithium ions ([0041]–[0043]) and including a first side and a second side (FIG. 5 and 6),
wherein the first side of the active material layer is in contact with the first conductive porous layer (60) (FIG. 5 and 6),
wherein the active material layer includes one or more conductive paths (see first porous conductive network layer 30, [0074], FIG. 5) arranged in the active material (see combination of second electric active material layer 50, [0074], FIG. 5, and first electric active material layer 20, [0074], FIG. 5) parallel to and spaced apart (FIG. 5) from porous current collectors (see current collector 10, [0040], FIG. 5, in combination with base porous conductive network layer 40, [0066], FIG. 5), each of the one or more conductive paths (30) including a porous conductive layer ([0074]).
Kim further discloses ([0071], [0076]; note that while [0071] is directed towards a different embodiment illustrated in FIG. 4B, it is relevant also to the embodiment illustrated in FIG. 5), wherein the one or more conductive paths (30) are manufactured by coating respective sub-layers of active material (for the sub-layer which is coated, see first electric active material layer 20, [0074], FIG. 5) onto the porous current collector (10 + 40) and coating the respective sub-layers (20) with the porous conductive layer (30). However, it is noted that this limitation is considered to be a product-by-process limitation, and even 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP § 2113).
PNG
media_image1.png
712
945
media_image1.png
Greyscale
FIG. 6 of Kim for the rejection of Claim 1 with annotations added by the Examiner
PNG
media_image2.png
241
914
media_image2.png
Greyscale
FIG. 5 of Kim for the rejection of Claim 1 with annotations added by the Examiner
Regarding Claim 2, Kim discloses the battery electrode of Claim 1. Kim further discloses wherein the active material layer comprises anode active material (see electric active material for an anode, [0042]–[0043]) selected from a group consisting of graphite (see natural graphite or Kish graphite, [0042]) and silicon (see silicon, [0043]).
Regarding Claim 3, Kim discloses the battery electrode of Claim 1. Kim further discloses wherein the active material layer comprises cathode active material (see electric active material for a cathode, [0041]) nickel manganese cobalt (NMC) (see Li[Ni, Mn, Co]O2, [0041]).
Regarding Claim 4, Kim discloses the battery electrode of Claim 1. Kim further discloses wherein the battery electrode of Claim 1 is further comprising:
a second separator layer (see separator 500, [0081], FIG. 6) including a first side and a second side (FIG. 6); and
a second conductive porous layer (see porous conductive network layer 60, [0074], FIG. 5) located on the first side of the second separator layer (500) (FIG. 5 and 6),
wherein the second side of the active material layer is in contact with the second conductive porous layer (60) (FIG. 5 and 6).
PNG
media_image3.png
610
955
media_image3.png
Greyscale
FIG. 6 of Kim for the rejection of Claim 4 with annotations added by the Examiner
PNG
media_image4.png
242
840
media_image4.png
Greyscale
FIG. 5 #1 of Kim for the rejection of Claim 4 with annotations added by the Examiner
PNG
media_image5.png
241
874
media_image5.png
Greyscale
FIG. 5 #2 of Kim for the rejection of Claim 4 with annotations added by the Examiner
Regarding Claim 5, Kim discloses the battery electrode of Claim 1. Kim further discloses wherein:
the active material layer comprises an anode active material layer ([0042]–[0043]), and
the active material layer includes one or more conductive porous layers (as in the rejection of Claim 1 set forth above, see first porous conductive network layer 30, [0074], FIG. 5).
Regarding Claim 6, Kim discloses the battery electrode of Claim 1. Kim further discloses wherein:
the active material layer comprises an anode active material layer ([0042]–[0043]), and
the anode active material layer includes:
a second separator layer (see separator 500, [0081], FIG. 6) including a first side and a second side;
a second conductive porous layer (see porous conductive network layer 60, [0074], FIG. 5) arranged on the first side of the second separator layer (500) (FIG. 5 and 6);
a third conductive porous layer (see porous conductive network layer 60, [0074], FIG. 5; note that this third conductive porous layer (60) can be understood as the conductive porous layer (60) of active electrode layer 15a adjacent to the second separator layer (500) shown in FIG. 6) arranged on the second side of the second separator layer;
a first anode active material sub-layer (see combination of second electric active material layer 50, [0074], FIG. 5, first porous conductive network layer 30, [0074], FIG. 5, first electric active material layer 20, [0074], FIG. 5, base porous conductive network layer 40, [0066], FIG. 5 and current collector 10, [0040], FIG. 5, comprised in active electrode layer 15b closest to the first separator layer (500) in FIG. 6) arranged on one side of the first conductive porous layer (60); and
a second anode active material sub-layer (see combination of second electric active material layer 50, [0074], FIG. 5, first porous conductive network layer 30, [0074], FIG. 5, first electric active material layer 20, [0074], FIG. 5, base porous conductive network layer 40, [0066], FIG. 5 and current collector 10, [0040], FIG. 5, comprised in active electrode layer 15b closest to second separator layer (500) in FIG. 6) arranged on one side of the second conductive porous layer (60) (FIG. 5 and 6).
PNG
media_image6.png
663
955
media_image6.png
Greyscale
FIG. 6 of Kim for the rejection of Claim 6 with annotations added by the Examiner
PNG
media_image7.png
242
888
media_image7.png
Greyscale
FIG. 5 #1 of Kim for the rejection of Claim 6 with annotations added by the Examiner
PNG
media_image8.png
241
921
media_image8.png
Greyscale
FIG. 5 #2 of Kim for the rejection of Claim 6 with annotations added by the Examiner
Regarding Claim 7, Kim discloses the battery electrode of Claim 1. Kim further discloses ([0036], [0048]) wherein the first conductive porous layer (60) includes a material selected from a group consisting of copper (Cu) (see copper, [0036]), nickel (Ni) (see nickel, [0036]), titanium (Ti) (see titanium, [0036]), carbon (see carbon fiber layer, [0048]), and aluminum (Al) (see aluminum, [0036]).
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2014/0306665 A1).
Regarding Claim 8, Kim discloses the battery electrode of Claim 1, but does not explicitly disclose wherein the thickness of the first conductive porous layer is less than or greater than 1 µm. However, Kim does disclose that the thickness of the conductive path (30) should range from about 0.5 µm to about 100 µm in order to achieve suitable levels of battery volume and energy density ([0051]), and that both the conductive path (30) and first conductive porous layer (60) comprise porous conductive networks and serve the same function of acting as intermediate electrodes ([0074], [0078]). Thus one of ordinary skill in the art will understand that the disclosure of Kim regarding the thickness of the conductive path (30) also would reasonably apply to the thickness of the first conductive porous layer (60). 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).
Kim is analogous to the claimed invention as it is in the same field of layered battery electrodes. Thus in addition to the prima facie case of obviousness established above, a person of ordinary skill in the art prior to the effective filing date of the claimed invention would have further found it obvious to select the overlapping portions of the ranges for the thickness of the first conductive porous layer with a reasonable expectation that such selection would successfully result in a battery electrode which would allow for suitable levels of battery volume and energy density to be achieved.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2014/0306665 A1) as evidenced by Heubner et al. (Heubner, C.; Nikolowski, K.; Reuber, S.; Schneider, M.; Wolter, M.; Michaelis, A. Recent Insights into Rate Performance Limitations of Li-ion Batteries, Batteries and Supercaps 4, p. 268–285, published 2 November 2020).
Regarding Claim 9, Kim discloses the battery electrode of Claim 1, but does not explicitly disclose wherein the active material layer has a thickness in a predetermined range from 10 µm to 100 µm. However, it is well-known in the field of layered battery electrodes that increasing electrode thickness increases areal capacity but impairs rate capability due to the extension of the lithium ion diffusion path and reduction of the effective diffusivity, as evidenced by Heubner (p. 276 ¶ “Besides the intrinsic…”).
A result-effective variable is a variable which achieves a recognized result. The determination of the optimum or workable ranges of a result-effective variable is routine experimentation and therefore obvious (MPEP § 2144.05.II). In the instant case, the thickness of the active material layer is a variable that achieves the recognized result of affecting the areal capacity and rate capability, as evidenced by Heubner, thus making the thickness of the active material layer a result-effective variable. Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the battery electrode of Kim such that the active material layer has a thickness in a predetermined range from 10 µm to 100 µm via routine experimentation, for the purpose of achieving suitable areal capacity and rate capability of the battery electrode.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2014/0306665 A1) in view of Prasanna et al. (Prasanna, K.; Kim, C.-S.; Lee, C. W. Effect of SiO2 coating on polyethylene separator with different stretching ratios for application in lithium ion batteries, Materials Chemistry and Physics 146, p. 545–550, published 22 August 2014).
Regarding Claim 10, Kim discloses the battery electrode of Claim 1, but does not explicitly disclose wherein the first separator layer includes silicon dioxide (SiO2).
Prasanna teaches a separator layer (see PE separators, p. 545 ¶ “We compared the…”) for an electrochemical cell that cycles lithium ions (see lithium ion batteries, p. 545–546 ¶ “Polyolefin separators used…”), wherein the separator layer includes silicon dioxide (SiO2) (see SiO2 ceramic composites, p. 545–546 ¶ “Polyolefin separators used…”). Prasanna teaches that including silicon dioxide (SiO2) in the separator layer improves the wettability (p. 547 ¶ “Wettability of the…”), electrolyte uptake (p. 547 ¶ “To determine the…”), and tensile and thermal properties (p. 548 ¶ “Fig. 4 shows…”) of the separator layer.
Prasanna is analogous to the claimed invention as it is in the same field of batteries capable of cycling lithium. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the battery electrode of Kim such that the first separator layer includes silicon dioxide (SiO2), for the purpose of improving the wettability, electrolyte uptake, and tensile and thermal properties of the separator layer.
Response to Arguments
Applicant states that the rejection of Claim 8 under 35 U.S.C. 112(b) and 112(d) is traversed, but did not supply arguments regarding this traversal in the Remarks filed 4 August 2025. These arguments are therefore not persuasive. Note that, as the amendment filed 4 August 2025 has overcome the rejection of Claim 8 under 35 U.S.C. 112(b) and 112(d), said rejections were withdrawn.
Applicant’s arguments regarding the rejection of Claims 1–10 under 35 U.S.C. 102 and 103 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.
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 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.
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, BASIA RIDLEY can be reached at (571)272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
Prosecution Insights