Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Application
Claims 1-11 are pending and presented for examination on the merit.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 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. Claims 1, 7, and 11 each recites “normal” in the last line and that term is a relative term which renders the claim indefinite. The term “normal” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, charging the cell to full voltage is considered. Claims 2-6 and 8-10 are rejected on the same ground for depending on the indefinite independent claims 1 and 7.
Further, claim 2 recites a limitation starting with “preferably” in line 2. Claim 7 contains a limitation starting with “possibly” in line 6. It is unclear whether these limitations are required. For examination purposes, they are considered not required.
Also, claim 2 recites “the partial charge step” and claim 7 recites the same term in lines 5 and 6. Claim 3 recites "the initial partial charge". There is insufficient antecedent basis for the limitation in the respective claim. For examination purposes, the terms are considered to refer to step c.
Claim 2 recites “…to stimulate further SEI loss” at the end and claim 7 recites the same limitation in line 6. However, according to the paragraph starting line 21 of Page 11 of the specification, the formation cycle, or charging step, can be repeated one or more times to further complete the formation of the SEI. It raises confusion whether the SEI is lost or completed in the claim step. For examination purposes, further SEI formation is considered.
Claim 6 recites the limitation “the formation cycles" in line 1. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the term is considered to refer to step c according to the paragraph starting line 21 of Page 11 of the specification.
Claim 10 recites “an elevated storage step” raises confusion about what is being elevated. For examination purposes, the term is considered to refer to elevated temperature storage as mentioned at the top of Page 13 of the specification.
Claim 11 fails to recite an action in step a) in line 2. For examination purposes, it is considered to recite “a) pre-lithiating an anode”.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-11 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 2011/0236751 to Amiruddin et al. (hereinafter Amiruddin I), in view of US 2012/0107680 to Amiruddin et al. (hereinafter Amiruddin II).
Regarding claims 1 and 11, Amiruddin I teaches a process of maximizing specific capacity and capacity retention of a lithium ion cell comprising: a) providing an anode, b) assembling the anode, a cathode, a separator and electrolyte into a sealed cell ([0004]; [0052]), c) charging the cell to a voltage above that of electrolyte reduction but below that voltage that would violate the anode maximum safe lithium capacity, e.g. first charging to a lower voltage and/or subsequent charging at least to the operational voltage to activate the cell ([0019]; [0030]; [0031]; [0071]; [0072]; [0078]), d) discharging or partially discharging the cell ([0031-33]; [0079]); and e) charging the cell to the full voltage in subsequent charging and discharging cycles and/or when ready for use ([0019]; [0078]; [0079]).
Amiruddin I does not expressly teach pre-lithiating the anode in step a).
Amiruddin II also relates to a lithium ion cell and teaches that supplemental lithium can be provided to the negative electrode active material prior to assembly of the battery (abstract; [0065-67]; [0070]; [0121]; [0143]; [0144]).
It would have been obvious to one of ordinary skill in the art at time of invention to have pre-lithiated the anode prior to assembly of the lithium ion cell in the process of Amiruddin I, motivated by the fact that Amiruddin II teaches that the inclusion of the supplemental lithium in the negative electrode results in dramatic decrease in the fading of specific capacity of the positive electrode active material by stabilizing the positive electrode active material and significantly improves cycling over a large number of cycles with significantly reduced facing of the battery capacities ([0040]; [0073]; [0150-152]).
Regarding claim 2, the cell is discharged and the partial charge step or step c) is repeated, as in the case of getting the battery ready for use or in the case of repeated charge/discharge cycling ([0078]; [0079]).
Regarding claim 3, an elevated temperature is applied to the cell after the initial partial charge or step c) for, e.g. at least about 12 hours ([0031]).
Regarding claims 4 and 5, Amiruddin I teaches that cell specific capacity and volumetric capacity density are increased ([0057]) and that cell capacity retention is increased (abstract; [0082]). Furthermore, since the prior arts render the claimed method obvious, the same results would have necessarily followed.
Regarding claim 6, step c) is performed at elevated temperature as it is combined with one or more resting step at an elevated temperature ([0031]; [0071]; [0075]; [0078]).
Regarding claim 7, Amiruddin I teaches a process of maximizing specific capacity and capacity retention of a lithium ion cell (abstract) comprising: a) providing an anode, b) assembling the anode, a cathode, a separator and electrolyte into a sealed cell ([0004]; [0052]), c) heating the cell to an elevated temperature as an elevated temperature is applied during one or more of the resting periods ([0031]), combined with d) charging the cell to a voltage above that of electrolyte reduction but below that voltage that would violate the anode maximum safe lithium capacity, e.g. charging initially to a lower voltage; and charging fully in subsequent charging and discharging cycles and/or when ready for use ([0004]; [0019]; [0030]; [0031]; [0070-74]; [0078]). The claimed steps e) and f) are optional and thus not required.
Amiruddin I does not expressly teach pre-lithiating the anode in step (a).
However, Amiruddin II also relates to a lithium ion cell and teaches that supplemental lithium supplemental lithium can be provided to the negative electrode active material prior to assembly of the battery using electrochemical deposition (abstract; [0065-67]; [0070]; [0121]; [0143]; [0144]).
It would have been obvious to one of ordinary skill in the art at time of invention to have pre-lithiated the anode prior to assembly of the lithium ion cell in the process of Amiruddin I, motivated by the fact that Amiruddin II teaches that the inclusion of the supplemental lithium in the negative electrode results in dramatic decrease in the fading of specific capacity of the positive electrode active material by stabilizing the positive electrode active material and significantly improves cycling over a large number of cycles with significantly reduced facing of the battery capacities ([0040]; [0073]; [0150-152]).
Regarding claims 8 and 9, Amiruddin I teaches that cell specific capacity and volumetric capacity density are increased ([0057]) and that cell capacity retention is increased (abstract; [0082]). Furthermore, since the prior arts render the claimed method obvious, the same results would have necessarily followed.
Regarding claim 10, Amiruddin I teaches that a storage step at an elevated temperature is used prior to fully charging the battery ([0031]; [0071]; [0075]]; [0078])
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 10-13 of U.S. Patent No. 9,748,599. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims 1 and 10 recite all of the limitations of claims 1 and 11 and claim 7 of the current application, receptively. Further, claims 2-6 of the conflicting patent correspond to claims 2-6 of the counterpart. Claims 11-13 of the conflicting patent are the same as claims 8-10 of the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENG M CHAN whose telephone number is (571)270-5859. The examiner can normally be reached 9 am - 5:30 pm on Monday, 9 am - 3 pm on Tuesday, and 9 am to 1 pm on Wednesday and Thursday.
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/Heng M. Chan/Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725