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 .
Claim Status
This office action is in response to amendments filed 07/14/2025. Claim 1 is amended, the amendments are supported by the specification and no new matter has been entered. Claims 2-5 stand as originally or as previously presented. Claims 6-10 are canceled. Claims 1-5 remain pending in this office action.
Claim Rejections
The 35 USC 103 rejection of claim 1 and any claims dependent from claim 1 over Iriyama (JP 2003162997 A) are withdrawn because of the amendments to the claims. Applicant’s amendments have necessitated new grounds of rejection as below laid forth.
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.
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Claim 1-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 and 6-7 of copending Application No. 18/443,981 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. 18/443,981 discloses every limitation of the instant claims 1-5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, claim 1 and 6 of Application No. 18/443,981 discloses a negative electrode (line 4) for a lithium secondary battery (line 1), the negative electrode comprising:
a negative electrode current collector (line 4), and
a negative electrode layer (line 5), wherein
the negative electrode layer includes a composite layer and a single lithium metal layer (lines 8-9), the composite layer including, as a negative electrode active material, an alloy of lithium metal and dissimilar metal (lines 9-10),
the composite layer and the single lithium metal layer are arranged in this order from the negative electrode current collector (lines 11-12), and
the dissimilar metal is an element that is able to form a solid solution with the lithium metal or an element that is able to form an intermetallic compound with the lithium metal (lines 13-15).
Claim 6 further discloses that the dissimilar metal is one or more selected from the group consisting of Mg, Bi, Pd, Au, Pt, Zn, Sr, Ba, Ga, and Ca.
Regarding claim 2, claim 2 of Application No. 18/443,981 discloses, word for word, the same limitations as the instant claim 2.
Regarding claim 3, claim 3 of Application No. 18/443,981 discloses, word for word, the same limitations as the instant claim 3.
Regarding claim 4, claim 4 of Application No. 18/443,981 discloses, word for word, the same limitations as the instant claim 4.
Regarding claim 5, claim 5 of Application No. 18/443,981 discloses that the mass of the alloy of the lithium metal and dissimilar metal is greater than 50% and less than 100% of the total mass of the composite layer.
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.
Claim(s) 1-3 and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iriyama (JP 2003162997 A, a machine translation from global dossier included in the office action of 04/16/2025 is used as an English equivalent), in view of Lee (US 20210143433 A1).
Regarding claim 1, Iriyama discloses a negative electrode [0053] for a lithium secondary battery [0058], the negative electrode comprising:
a negative electrode current collector [0053], and
a negative electrode layer (abstract discloses an anode current collector, [0053] discloses a negative electrode with a current collector 1a and the formation of a negative electrode layer on the collector), wherein
the negative electrode layer includes a composite layer and a single lithium metal layer ([0021] discloses a lithium occluding material-containing layer for the negative electrode as the composite layer, [0088] discloses a lithium metal layer 5c for the negative electrode reading on the claimed single lithium metal layer), the composite layer including, as a negative electrode active material, an alloy of lithium metal and a dissimilar metal (Iriyama does not explicitly disclose an embodiment using an alloy of lithium metal and a dissimilar metal to form the composite layer, however [0021] discloses that the lithium occluding material-containing layer may contain an alloy of lithium and a dissimilar metal, including Si, Ge, In, Sn, Ag, Al, and Pb. As a result, it would have been obvious to one of ordinary skill in the art to selected an alloy of lithium and a dissimilar metal to create the composite layer of Iriyama. One of ordinary skill in the art would have been motivated to do this to obtain a material capable of forming the lithium occluding material containing layer disclosed by Iriyama),
the composite layer and the single lithium metal layer are arranged in this order from the negative electrode current collector (as disclosed by [0089] and can be seen in fig. 8, the lithium occlusion material 2c is positioned on top of the collector 1c, and the lithium metal layer 5c is positioned above the lithium occlusion layer, satisfying the claimed configuration), and
the dissimilar metal is an element that is able to form a solid solution with the lithium metal or an element that is able to form an intermetallic compound with the lithium metal ([0021] discloses that the lithium occluding material-containing layer may contain an alloy of lithium and a dissimilar metal, including Si, Ge, In, Sn, Ag, Al, and Pb, all of which are elements that satisfy the claimed capability).
Iriyama does not disclose that the dissimilar metal is one or more elements selected from the group consisting of Mg, Bi, Pd, Au, Pt, Zn, Sr, Ba, Ga, and Ca. Iriyama discloses that the lithium occluding material-containing layer contains a material capable of absorbing and releasing lithium ions [0019]. [0021] discloses that the lithium occluding material-containing layer may contain an alloy of lithium and certain dissimilar metals, however these lithium-dissimilar metal alloys are not the only lithium-dissimilar metal alloys known in the art to absorb and release lithium ions in lithium secondary batteries, and it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that other known lithium alloys known to be effective could be used.
For example, Lee discloses a similar arrangement to Iriyama in which a second active material layer (corresponding to the lithium occluding material-containing layer of Iriyama) is provided on the current collector (the same location as the lithium occluding material-containing layer of Iriyama) containing, for example, a lithium-metal alloy such as Li-Au, Li-Zn, or generally any suitable lithium alloy generally available in the art [0118]. [0121] discloses that when the second negative active material layer is located between the current collector and a first negative active material layer (the same layer structure as Iriyama), cycle characteristics may be improved.
As a result, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use Lithium metal alloys such as Li-Au and Li-Zn as the lithium alloy of the lithium occluding material-containing layer of Iriyama. A person of ordinary skill in the art would have been motivated to do this to obtain a lithium alloy known to be useful in lithium secondary battery anodes and to improve cycle characteristics. Doing this would result in a dissimilar metal which is one or more selected from the claimed group, and also meets the previously discussed limitation of being able to form a solid solution with the lithium metal or an element that is able to form an intermetallic compound with the lithium metal.
Regarding claim 2, Iriyama in view of Lee discloses the negative electrode according to claim 1, but does not disclose the claimed ratio Z of a thickness X of the single lithium metal layer to a thickness Y of the composite layer. However, [0088] of Iriyama discloses that the lithium metal layer 5c may have a thickness ranging from 1 nm to 10 µm, and [0049] discloses that the thickness of the lithium occlusion material layer 2a is not particularly limited, but is for example set to 0.5 µm or more and 200 µm or less, and that within this range it is possible to achieve both high battery capacity and good productivity. Upon examining the given ranges for both layers, one of ordinary skill in the art can see that the given ranges allow for configurations wherein the thicknesses of the two layers fall both within and outside ranges allowed by the instantly claimed formula, or, in other words, that the thicknesses of the two layers overlap with that allowed by the instant claim. For example, the thickness of the single lithium layer of Iriyama can be up to 10 µm, while the thickness of the composite layer can be up to 200. If both layers were created at their maximum thickness, X/Y would be 10/200, or 0.05, falling within the claimed range of 0.0001 to 0.4. Or, if minimum values of 1nm and 0.5µm (500nm) were chosen, 1/500= 0.002, also falling within the claimed range. These are just two examples, and it would be obvious to one of ordinary skill in the art that the layer thicknesses allowed by the disclosure of Iriyama would overlap with the claimed range across many other possible points. As a result, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to routinely select a thickness for each of the two layers from amongst the portions of the disclosed thickness ranges that overlap with the instantly claimed Z (X/Y) value because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (1)).
Regarding claim 3, Iriyama in view of Lee discloses the negative electrode according to claim 2, but does not disclose the claimed ratio Z of a thickness X of the single lithium metal layer to a thickness Y of the composite layer. However, [0088] of Iriyama discloses that the lithium metal layer 5c may have a thickness ranging from 1 nm to 10 µm, and [0049] discloses that the thickness of the lithium occlusion material layer 2a is not particularly limited, but is for example set to 0.5 µm or more and 200 µm or less, and that within this range it is possible to achieve both high battery capacity and good productivity. Upon examining the given ranges for both layers, one of ordinary skill in the art can see that the given ranges allow for configurations wherein the thicknesses of the two layers fall both within and outside ranges allowed by the instantly claimed formula, or, in other words, that the thicknesses of the two layers overlap with that allowed by the instant claim. For example, the thickness of the single lithium layer of Iriyama can be up to 10 µm, while the thickness of the composite layer can be up to 200. If both layers were created at their maximum thickness, X/Y would be 10/200, or 0.05, falling within the claimed range of 0.0001 to 0.3. Or, if minimum values of 1nm and 0.5µm (500nm) were chosen, 1/500= 0.002, also falling within the claimed range. These are just two examples, and it would be obvious to one of ordinary skill in the art that the layer thicknesses allowed by the disclosure of Iriyama would overlap with the claimed range across many other possible points. As a result, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to routinely select a thickness for each of the two layers from amongst the portions of the disclosed thickness ranges that overlap with the instantly claimed Z (X/Y) value because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (see MPEP 2144.05 (1)).
Regarding claim 5, Iriyama in view of Lee discloses the negative electrode according to claim 1, wherein mass of the alloy of the lithium metal and the dissimilar metal is 50% or more of the total mass of the composite layer ([0021], [0036] discloses that the lithium occluding material-containing layer may be an alloy of lithium and a dissimilar metal (see claim 1 rejection above). While Iriyama leaves open the possibility of other materials being additionally used in the lithium occluding material-containing layer, the possibility of the entire layer being formed from one material, including the alloy, is also embodied, reading on the instant claim 5.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iriyama (JP 2003162997 A, a machine translation from global dossier is used as an English equivalent) in view of Lee (US 20210143433 A1), and further in view of Li (US 20200343583 A1).
Regarding claim 4, Iriyama in view of Lee discloses the negative electrode according to claim 1, but does not disclose an element percentage of lithium element present in the alloy. Because modified Iriyama does not disclose the percentage of lithium element present in the lithium-dissimilar metal alloy, one of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to look to lithium alloys used in the art for negative electrodes to determine how much lithium element to include in the battery of Iriyama.
For example, [0035], [0109] of Li discloses a lithium secondary battery in which at least one of a lithium metal and a lithium alloy is used as an anode active material. [0014] further discloses that the lithium alloy is a single β-phase alloy of a lithium metal, with [0051] disclosing that the percentage of lithium element in the alloy is 30 atomic % to 99.97 atomic % or less when the battery is fully charged, disclosing the same range as claimed by the instant claim, and also offering further narrower and more preferred ranges that also fall within the instantly claimed range. [0051] and [0135] discloses that the given ranges are desired for further increasing the charge-discharge efficiency of the battery and suppressing an increase in resistance. Examples deal primarily with alloys of Li and Mg, but [0063] discloses that the alloy may also be an alloy of lithium and Sn, Si, Al, Ge, Pb, or In, which are all alloys disclosed by Iriyama, as well as Zn and Au, which are alloys disclosed by Lee (see claim 1 rejection above). As a result, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to use a percentage of lithium element in the alloy within the range disclosed by Li for the Li alloy of modified Iriyama. One of ordinary skill in the art would have been motivated to do so in order to increase the charge-discharge efficiency of the battery, suppress an increase in resistance, and create an alloy to serve as the lithium occlusion layer of Iriyama.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 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.
Applicant’s arguments with respect to the double patenting rejection of the claims are considered but are not persuasive. This is because, while applicant argues that the amended claims of U.S. 18/443,981 and the amended claims of the instant application are sufficiently different such that claim 1 of the instant application would not have been obvious in view of amended claim 1 of U.S. 18/443,981, as best as examiner can tell, the claims of U.S. 18/443,981 still disclose each and every limitation of the instant claims. Examiner notes that claim 1 of U.S. 18,443,981 is no longer sufficient by itself to reject claim 1 of the instant application, but that the limitations of the instant claim 1 not found in claim 1 of U.S. 18,443,981 can be found in claim 6 of U.S. 18,443,981, and thus a double patenting rejection is still proper.
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 ZACKARY R COCHENOUR whose telephone number is (703)756-1480. The examiner can normally be reached 1-9:00PM ET.
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/ZACKARY RICHARD COCHENOUR/Examiner, Art Unit 1752
/NICHOLAS A SMITH/Supervisory Primary Examiner, Art Unit 1752