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 .
Election/Restrictions
Applicant's election with traverse of Species A, on which claims 1-2 and 5-14 read, in the reply filed on Nov. 3, 2025 is acknowledged. The traversal is on the ground(s) that “Applicant believes that all claims could be examined together”. This is not found persuasive because of the reasons provided in the Restriction/Election requirement mailed on Sept. 3, 2025.
The requirement is still deemed proper and is therefore made FINAL.
Species B, Species C, and Species D are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on Nov. 3, 2025. Claims 1-2 (with Formula A) and 5-14 are being examined on the merits in this office action. Claims 3-4 (with non-elected Species D and Sub-species D) are withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Nov. 15 has been considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities. Appropriate correction is required.
There should be a preposition, such as “and”, between the two sentences starting with “wherein”. An article is missing before “metal foil”.
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 1-2 and 5-14 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.
1) Claim 1 recites the limitation "said anode, said cathode". There are insufficient antecedent bases for these limitations in the claim. In addition, as to “one or more of said anode, said cathode and said electrolyte system comprises at least one additive …”, it appears that the specification discloses the said additive(s) is included in only electrolyte system. For purposes of examination, the said anode and said cathode are interpreted as referring to aforementioned negative electrode and positive electrode in claim 1, respectively.
2) In claim 1, it is unclear what unit (volume? Weight? …?) the claimed “concentration” is based on. It is also unclear whether the claimed percentage refers to a content in one of “said anode, said cathode and said electrolyte system”, or a total content in “said anode, said cathode and said electrolyte system”. This issue applies similarly to claim 6. For purposes of examination, any units, including a weight unit, is being used in the following rejections.
3) The term “about” in claim 1 is a relative term which renders the claim indefinite. The term “about” 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. The claimed range of about 0.1% to 10% has been rendered indefinite due to the use of “about”. This issue applies similarly to claim 6.
4) Claim 1 recites the limitation "said electrode material". There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, any material(s) mentioned above is/are being interpreted as “said electrode material”. Also, in “said electrode material is mixed to create a slurry”, what is to be mixed with, a solvent?
5) A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “one or more of said anode, said cathode and said electrolyte system comprises at least one additive” (Note that this recitation does not require that the additive is included in said anode or/and said cathode), and the claim also recites “said additive is added to said slurry” (Note that according to the claim language, the slurry refers to a slurry of said anode or/and said cathode, and that this recitation requires the additive to be included in said anode or/and said cathode) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
6) The term “substantially” in claim 10 is a relative term which renders the claim indefinite. The term “substantially” 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. The claimed “substantially free of non-fluorine containing cyclic carbonate” has been rendered indefinite due to the use of “substantially”.
Furthermore, the limitation recited in claim 10 is not understandable, because a linear carbonate (in claim 6 on which claim 10 depends), which is “non-fluorine containing cyclic carbonate”, is present in the said electrolyte system.
7) The limitations recited in claims 13 and 14 are unclear because the limitations can be interpreted in at least the following two ways: i) greater than 50% and less than about 99% of the negative electrode is silicon; and ii) greater than 50% and less than about 99% of silicon exists in the form of particles. The claim languages are ambiguous, rendering the claims indefinite. It is suggested that the limitations in claims 13-14 be modified for clarification. For purposes of examination, the first case is being applied in this office action, since it appears to be Applicant’s intent.
Still in claims 13 and 14, the term “about” is a relative term which renders the claims indefinite. The term “about” 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. The claimed ranges of “less than about …” have been rendered indefinite due to the use of “about”.
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 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 through the invention is not identically disclosed or described as set forth in section 102 of this title, 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 negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2, 5 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nishie et al. (US 20070072084 A1, hereafter Nishie).
Regarding claims 1-2, 5 and 12, Nishie teaches a method (See Examples) of forming an energy storage device, the method comprising:
forming an energy storage device (“nonaqueous electrolyte battery”, at least [0006]-[0008]) comprising:
a positive electrode (at least: [0003], [0038]);
a negative electrode comprising an active material comprising or consists essentially of silicon (at least: [0003], [0007]-[0010]);
a separator ([0043]) between the positive electrode and the negative electrode (It is general knowledge); and an electrolyte system (“nonaqueous electrolyte solution”, at least [0009], [0011]);
wherein one or more of said anode, said cathode and said electrolyte system comprises at least one additive, wherein said additive comprises a phosphazene based compound (represented by Chemical Formula 2, [0011]) in said electrolyte system at a concentration of 0.1% to 30% by mass ([0017]).
The above-said Chemical Formula 2 reads on the claimed formula (A) when, for example, n=3, R1 is an methoxy group, and R2 is a methyl group (See [0015]-[0016]; R1 and R2 may be different, [0012]). The claimed range lies inside the above range of 0.1% to 30%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Nishie further teaches said electrode material, such as silicon (Example 1), is mixed to create a slurry (“paste”, [0046]-[0047]), said additive is added to said slurry ([0049]-[0050]: the additive cyclic phosphazene derivative in the electrolyte solution would be added to the slurry when forming the battery), said slurry is coated on a metal foil (“copper foil leaf”, [0047]), and the coated metal foil is dried ([0047]). The only difference between the teachings of Nishie and the instant invention lies in the order of process steps, specifically, the step of “additive is added to said slurry”. However, in general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held not to patentably distinguish the process (e.g., Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See MPEP 2144.04 (IV)(C). In the instant case, at least the final result (forming an energy storage device) is substantially identical or equivalent.
Regarding claims 13-14, Nishie teaches the method of claim 1, and further teaches a mixture of silicon (in [0024]: silicon-containing material A may refer to silicon only, see “independently” in [0019]; and [0021]) and a coated conductive material B can be used as a negative electrode active material ([0024]), wherein the silicon content may be in a range of 70% to 99% by weight (i.e., 100% - 1~30%, see [0024]). The claimed ranges of “greater than 50% and less than about 99%” and “greater than 50% and less than about 90%” in claims 13-14 overlap the range of 70% to 99%, respectively. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I). In addition, it is generally knowledge that a silicon material is composed of silicon particles.
Claims 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nishie, as applied to claim 5 above, and further in view of Chen et al. (US 20150333371 A1, hereafter Chen).
Regarding claims 6-11, Nishi teaches the method of claim 5, and further teaches the said electrolyte system further comprises a linear carbonate, such as ethyl methyl carbonate (EMC) ([0039]) at a concentration of about 56% (calculated from data in [0050] for example), and a Li-containing salt, such as a fluorinated Li salt, LiPF6 ([0041]) at a concentration of 1 M, for example ([0050]).
Nishie appears silent as to the use of a fluorine containing cyclic carbonate included in the electrolyte system. However, in the same field of endeavor, Chen discloses that adding fluoroethylene carbonate (FEC) to an electrolyte beneficially provides a smaller net impedance growth on the battery, particularly when the battery is operated and/or stored at elevated temperatures ([0045]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have added a fluorine containing cyclic carbonate, such as fluoroethylene carbonate taught by Chen, in the electrolyte system of Nishie in order to achieve the benefits stated above. The concentration of fluoroethylene carbonate may be 1 wt% to 5 wt% (claim 4, Chen), overlapping the instantly claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Nishie in view of Chen does not teach other non-fluorine containing cyclic carbonate(s) is/are used in the electrolyte system.
As to the above-discussed concentrations, it is also noted that differences in concentration or temperature will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP § 2144.05-II-A.
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 1-2 and 5-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. US11522223B2 (‘223). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations of the instant invention are taught by those recited in the reference patent ‘223. Note that the instantly claimed process steps are basic steps known to one of ordinary skill in the battery art, and thus are not patentably distinguishable. Note also that differences in concentration [or temperature] will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP § 2144.05-II-A.
Claims 1-2 and 5-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7, 9-11 and 13-16 of copending Application No. 16893130 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations of the instant invention are taught by those recited in the reference application. Note that the instantly claimed process steps are basic steps known to one of ordinary skill in the battery art, and thus are not patentably distinguishable. Note also that differences in concentration [or temperature] will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP § 2144.05-II-A.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727