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 without traverse of Group I in the reply filed on September 17, 2025 is acknowledged.
Claims 9-12 and 21-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 17, 2025.
Specification
The disclosure is objected to because of the following informalities:
Paragraph 0106 “The maximum value in the Z-direction at which an element that is not detected from the negative electrode active material, but is detected from the insulating material is detected is set as ZA. The average thickness of the negative electrode active material layer 120 in the Z-direction is set as ZB. At this time, ZA/ZB is equal to or less than 11%.”
Paragraph 0115 “…when the average thickness of the negative electrode active material layer in the Z-direction is set as ZB, regarding the maximum depth ZA at which the insulating material is detected in the negative electrode active material layer 120, ZA/ZB is equal to or less than 11%. Thus, the insulating material is not excessively diffused into the negative electrode active material layer 120.”
Paragraph 0157 “Furthermore, the above ZA/ZB was 6.1%, which was equal to or less than 11%. ZA was 6.3 µm.”
Paragraph 0158 “The above ZA/ZB was 79%, which was equal to or more than 11%.”
Paragraph 0159 “The above ZA/ZB of the samples in Comparative Examples 1 and 5 were 44% and 36%, respectively, both of which were equal to or more than 11%.
Paragraph 0162 “3. The negative electrode for the lithium ion secondary battery described in 1. or 2., in which when elemental mapping is performed by using an EDX method on a cross-sectional SEM image of a cross section of a negative electrode, and a direction toward a side of the current collector from a surface of the negative electrode active material layer, a side of which is not in contact with the current collector is set as a Z-direction, a maximum value in the Z-direction in which an element that is
not detected from the negative electrode active material, but is detected from the insulating material is detected is set as ZA, and an average thickness of the negative electrode active material layer in the Z- direction is set as ZB, ZA/ZB is equal to or less than 11%.
Regarding the above referenced paragraphs, the ordinary meaning of ZA/ZB is a ratio and not a % as recited. Therefore, the content of the specification is unclear. For purpose of compact prosecution, the Examiner has interpreted the expressed % as a typographical error and has interpreted ZA/ZB as a ratio, such as ZA/ZB is equal to or less than 0.11.
Appropriate correction throughout the specification is required. If the inconsistency above is not a typographical error, the Examiner will consider a 35 U.S.C. 112(a) rejection in future Office Actions.
Further, the specification defines ZA in paragraph 0106 differently from paragraph 0115.
In paragraph 0106, “The maximum value in the Z-direction at which an element that is not detected from the negative electrode active material, but is detected from the insulating material is detected is set as ZA.” As recited, since the element is being detected in the negative electrode active material, all elements from the negative electrode active material would be detectable at the origin of the surface of the negative electrode active material and, therefore, ZA is inherently zero. Otherwise, if the origin of the detection surface is the surface of the insulating layer, ZA would be the thickness of the insulating layer. In contrast, paragraph 0115 indicates ZA is the maximum depth at which the insulating material is detected in the negative electrode active material layer. Clarification of the specification is required.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3 recites “The negative electrode for the lithium ion secondary battery according to claim 1, wherein
when elemental mapping is performed by using an EDX method on a cross-sectional SEM image of a cross section of the negative electrode, and a direction toward a side of the current collector from a surface of the negative electrode active material layer, a side of which is not in contact with the current collector is set as a Z-direction, a maximum value of a thickness in the Z-direction in which an element that is not detected from the negative electrode active material, but is detected from the insulating material is detected is set as ZA, and an average thickness of the negative electrode active material layer in the Z-direction is set as ZB,
ZA/ZB is equal to or less than 11%.
The claim limitation “a side of which is not in contact with the current collector” seems to modify the negative electrode active material layer and there is a typographical error due to a missing comma after current collector. For purpose of compact prosecution, the Examiner has interpreted the first 6 lines of Claim 3 as follows: “The negative electrode for the lithium ion secondary battery according to claim 1, wherein when elemental mapping is performed by using an EDX method on a cross-sectional SEM image of a cross section of the negative electrode, and a direction toward a side of the current collector from a surface of the negative electrode active material layer, a side of which is not in contact with the current collector, is set as a Z-direction…”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 3-4 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 3 recites “The negative electrode for the lithium ion secondary battery according to claim 1, wherein
when elemental mapping is performed by using an EDX method on a cross-sectional SEM image of a cross section of the negative electrode, and a direction toward a side of the current collector from a surface of the negative electrode active material layer, a side of which is not in contact with the current collector, is set as a Z-direction, a maximum value of a thickness in the Z-direction in which an element that is not detected from the negative electrode active material, but is detected from the insulating material is detected is set as ZA, and an average thickness of the negative electrode active material layer in the Z-direction is set as ZB,
ZA/ZB is equal to or less than 11%.
Claim 3 recites in lines 6-8 “a maximum value of a thickness in the z-direction in which an element that is not detected from the negative electrode active material, but is detected from the insulating material is detected is set as ZA”. The meaning of the limitation defining ZA is unclear. As recited in lines 4-5, the claimed direction originates at the surface of the negative electrode active material which would require there to be an element from the negative electrode active material; therefore, ZA would inherently be 0. If alternatively the claimed direction originates at the surface of the insulating layer on the negative electrode active material layer, then ZA is the thickness of the insulating layer. Due to the lack of clarity of the meaning of ZA, the claim is indefinite.
For purpose of compact prosecution, in light of the instant specification the Examiner has interpreted Claim 3. Based on paragraph 0115, ZA references the maximum depth at which the insulating material is detected in the negative electrode active material layer. Therefore, for purpose of compact prosecution, this limitation is interpretated as “a maximum value of a thickness measured in the z-direction from the surface of the negative electrode active material in which an element from the insulating material is detected is set as ZA”. Clarification is required.
Further, Claim 3 recites on the last line “ZA/ZB is equal to or less than 11%”. Claim 3 further defines ZA as a maximum value of a thickness in the z-direction in which an element that is not detect from the negative electrode active material but is detected from the insulating material and ZB as an average thickness of the negative electrode active material. Therefore, the claimed ZA/ZB is not a percentage as claimed but is instead a ratio, which makes the claim indefinite. For purpose of compact prosecution, the Examiner has interpretated claim 3 to recite “ZA/ZB is equal to or less than 0.11”. Clarification is required.
Claim 4 depends on Claim 3 and is also, therefore, indefinite for the reasons provided above.
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.
Claim(s) 1-2, 5, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teranishi et al. [WO2019156031A1, as provided on the IDS dated 8/15/2025, US20210057732A1 relied upon for translation], hereinafter Teranishi.
Regarding Claim 1, Teranishi discloses a negative electrode for a lithium ion secondary battery [Teranishi 0018, 0039-0057, 0115 and throughout], having a negative electrode active material layer containing at least a negative electrode active material [Teranishi 0018, 0039-0057, 0115 and throughout, specifically 0040] and a binder [Teranishi 0018, 0039-0057, 0115 and throughout, specifically 0045-0054] formed on a current collector [Teranishi 0018, 0039-0057, 0115 and throughout, specifically 0055-0056, Fig. 1, current collector 13, active material 11], wherein the negative electrode further comprises an insulating layer containing at least an insulating material and a binder [Teranishi 0016-0038] provided on a surface of the negative electrode active material layer [Teranishi 0016-0038, Fig. 1, insulating layer 12 on active material layer 11], the binder contained in the insulating layer includes at least styrene-butadiene rubber and at least one selected from carboxymethyl cellulose and salts thereof [Teranishi 0031], and the binder contained in the negative electrode active material layer is at least one selected from polyacrylic acid and salts thereof [Teranishi 0039-0049].
Regarding Claim 2, Teranishi discloses the negative electrode for the lithium ion secondary battery according to claim 1. Teranishi further discloses the, wherein a mixed layer of the negative electrode active material layer and the insulating layer is formed at an interface between the negative electrode active material layer and the insulating layer, a thickness of the mixed layer being thinner than a thickness of the negative electrode active material layer [Teranishi 0020-0021, interface; 0053 active material layer, Teranishi discloses an interface between the negative electrode active material layer and the insulating layer. The broadest reasonable interpretation of Teranishi is insulating layer 12 would fill the roughness gaps in the surface of active material layer 11 at the interface 12A to form a mixed layer. Otherwise, the insulating layer will not sufficiently insulate the negative electrode active material [Teranishi 0063-0065] and will have poor adhesion. Based on SEM analysis of the surface, Teranishi discloses the roughness of the interface as 2 µm or less [Teranishi abstract and throughout], therefore the broadest reasonable interpretation is the interfacial mixed layer thickness is 2 µm or less. Teranishi further discloses the negative electrode active layer material thickness is 10 to 100 µm [Teranishi 0053]. Therefore, Teranishi meets the limitations.
Regarding Claim 5, Teranishi discloses the negative electrode for the lithium ion secondary battery according to claim 1, wherein a D50 particle size at which a cumulative volume is 50% in a particle size distribution of a particle size of the insulating material is equal to or more than 0.2 µm and equal to or less than 0.8 µm [Teranishi 0027, 0117, 0128, Table 1, Teranishi discloses the range of 0.01 to 1 µm [0027] and all Examples as provided in Table 1 are either 0.4 µm or 0.5 µm, which is considered to anticipate the claimed range with sufficient specificity per MPEP 2131.03.].
Regarding Claim 8, Teranishi discloses the negative electrode for the lithium ion secondary battery according to claim 1, wherein the insulating material contains at least one selected from alumina, silica, acrylic resin, magnesia, calcia, titania, zirconia, boehmite, and magnesium hydroxide [Teranishi 0024-0026, Teranishi discloses alumina, silica, acrylic resin, calcia, titania, zirconia, and boehmite.].
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(s) 3, 4, 6, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Teranishi et al. [WO2019156031A1, as provided on the IDS dated 8/15/2025, US20210057732A1 relied upon for translation], hereinafter Teranishi, as applied to claim 1 above.
Regarding Claim 3, Teranishi discloses the negative electrode for the lithium ion secondary battery according to claim 1, wherein when elemental mapping is performed by using an EDX method on a cross-sectional SEM image of a cross section of the negative electrode [Teranishi 0108], and a direction toward a side of the current collector from a surface of the negative electrode active material layer, a side of which is not in contact with the current collector, is set as a Z-direction [Teranishi 0108, thickness direction measurement], a maximum value of a thickness measured in the z-direction from the surface of the negative electrode active material in which an element from the insulating material is detected is set as ZA, and an average thickness of the negative electrode active material layer in the Z-direction is set as ZB, ZA/ZB is equal to or less than 0.11 [Examiner edit]. [Teranishi abstract, 0007, 0020, 0108, 0136, Table 1, Teranishi discloses a surface roughness at the interface between the insulating layer and the negative electrode active material of 2 μm or lower [abstract, 0007, 0020, 0108, 0136, Table 1]. The skilled artisan would expect that Teranishi’s insulating layer 12 would fill the surface roughness of the negative electrode; otherwise, the insulating layer will not sufficiently insulate the negative electrode active material [Teranishi 0063-0065] and will have poor adhesion. Therefore, Teranishi’s surface roughness of the negative electrode (less than 2 μm ) reads on “the maximum thickness in the z-direction from the surface of the negative electrode active material in which an element from the insulating material is detected is set as ZA”. Further, Teranishi discloses the thickness of the negative electrode active material is 10 to 100 µm, which reads on the claimed ZB. Therefore, the ratio of Teranishi’s ZA/ZB is 0.02 to .2, which overlaps the claimed range of less than 0.11. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Regarding the limitation “when elemental mapping is performed by using an EDX method on a cross-sectional SEM image of a cross section of the negative electrode” is considered a product-by-process limitation per MPEP 2113. [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 this case, the structure of the claimed negative electrode is the same whether the claimed thickness and resulting thickness ratio are measured by an EDX method or another method.
Regarding Claim 4, modified Teranishi discloses the negative electrode for the lithium ion secondary battery according to claim 3, wherein the maximum value ZA of the thickness in the Z-direction is equal to or less than 35 µm [Teranishi abstract, 0007, 0020, 0108, 0136, Table 1, For the reasons described in Claim 3 above, Teranishi discloses ZA is 2µm or less.].
Regarding Claim 6, Teranishi discloses the negative electrode for the lithium ion secondary battery according to claim 1, wherein a weight of the styrene-butadiene rubber contained in the insulating layer with respect to a total weight of a solid material forming the insulating layer is equal to or more than 3% by weight and equal to or less than 6% by weight [Teranishi 0031, 0037, Teranishi discloses SBR as a binder [0031] for the insulating layer and discloses the binder is 5 to 50% by mass, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.]. Further, it would be obvious to the skilled artisan that the amount of binder is a result-effective variable. If there is too little binder, the insulating layer will not be held together as a uniform, continuous layer and will therefore not be sufficiently insulating. If there is too much binder, the effect of the insulating particles will be reduced and the layer will not be suitably insulative. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine a workable range of binder in consideration of providing a uniform porous structure with “suitable insulativity” through routine optimization [Teranishi 0037]. See MPEP 2144.05II,B, routine optimization.
Regarding Claim 7, Teranishi discloses negative electrode for the lithium ion secondary battery according to claim 1, wherein a total weight of the polyacrylic acid and the salts thereof in the binder, which are the polyacrylic acid and the salts thereof contained in the negative electrode active material layer with respect to a total weight of a solid material forming the negative electrode active material layer is equal to or more than 3% by weight and equal to or less than 6% by weight [Teranishi 0046, Teranishi discloses 1.5 to 40% by weight, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.]. Further, it would be obvious to the skilled artisan that the amount of binder is a result-effective variable. If there is too little binder, the negative electrode active material will not be held together as a uniform, continuous layer and will therefore not adhere sufficiently to the current collector. If there is too much binder, the space occupied by the active material is not used effectively affecting the energy density of the battery. It would have been obvious to one of ordinary skill in the art before the effective filing date to determine a workable range of binder in consideration of providing a uniform continuous layer that adheres to the current collector with suitable energy density through routine optimization. See MPEP 2144.05II,B, routine optimization.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Teranishi et al. [WO2019156031A1, as provided on the IDS dated 8/15/2025, US20210057732A1 relied upon for translation], hereinafter Teranishi, as applied to claim 1 above, in view of Yoshida et al. [WO2019176393A1, dated September 19, 2019, US12021241B2 relied upon for translation], hereinafter Yoshida.
Regarding Claim 2, Teranishi discloses the negative electrode for the lithium ion secondary battery according to claim 1. Teranishi further discloses wherein a mixed layer of the negative electrode active material layer and the insulating layer is formed at an interface between the negative electrode active material layer and the insulating layer, a thickness of the mixed layer being thinner than a thickness of the negative electrode active material layer [Teranishi 0020-0021, interface; 0053 active material layer, Teranishi discloses an interface between the negative electrode active material layer and the insulating layer. The broadest reasonable interpretation of Teranishi is insulating layer 12 would fill the roughness gaps in the surface of active material layer 11 at the interface 12A. Based on SEM analysis of the surface, Teranishi discloses this interfacial mixed layer thickness is 2 µm or lower [Teranishi abstract and throughout]. Teranishi further discloses the negative electrode active layer material thickness is 10 to 100 µm [0053]. Therefore, Teranishi meets the limitations.
Alternative U.S.C. 103 rejection:
Yoshida discloses a negative electrode for a lithium ion secondary battery [Yoshida columns 6-9 and throughout], having a negative electrode active material layer containing at least a negative electrode active material and a binder formed on a current collector [Yoshida columns 6-9 and throughout], wherein the negative electrode further comprises an insulating layer containing at least an insulating material and a binder [Yoshida columns 10-14 and throughout] provided on a surface of the negative electrode active material layer [Yoshida columns 10-14 and throughout], the binder contained in the insulating layer includes at least styrene-butadiene rubber and at least one selected from carboxymethyl cellulose and salts thereof [Yoshida, column 12 lines 59-column 13 line 27 and throughout]. Yoshida discloses acrylic acid and sodium acrylate as a binders [Yoshida column 8, lines 24-39 and throughout] but does not explicitly teach polyacrylic acid or salts thereof as claimed in claim 1. Yoshida further teaches wherein a mixed layer of the negative electrode active material layer and the insulating layer is formed at an interface between the negative electrode active material layer and the insulating layer [Yoshida columns 15-18 and throughout, Yoshida discloses the binder in the insulating layer penetrates into the active material layer so that both a first binder of the active material layer and a second binder of the insulating material layer exist in an interface region of the two layers [column 15, lines 14-23 and throughout], a thickness of the mixed layer being thinner than a thickness of the negative electrode active material layer [Yoshida column 6 and throughout, Fig. 6A, Fig. 6A is an EDX-SEM image with a scale in µm showing the thickness of the insulating layer, the mixed layer at the interface region, and the electrode active material, where the thickness of the mixed layer is thinner than the thickness of the electrode active material (see modified Fig. 6A below). Further, since Yoshida discloses the insulating layer can be on both the positive active material and the negative active material [Yoshida column 11, lines 4-12, and throughout], Yoshida’s Fig. 6A reads on the claimed thickness comparison. It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Yoshida’s disclosure of an interfacial mixed layer in Teranishi’s negative electrode material as it contributes to Teranishi’s disclosure by defining the mixed layer as the penetration of the insulating layer binder into the electrode active material, such as the negative electrode, forming a mixed layer at the interface of the insulating layer and the negative electrode material, which can be controlled by the application process, such as applying the insulating layer slurry on the active layer slurry before the slurry dries or pre-applying a binder layer before applying the insulating layer slurry, adjusting the slurry content ratio of the insulating layer slurry to affect the drying time, or adjust the viscosity of the insulating layer slurry [Yoshida column 17 and throughout] for the predictable result of an insulating layer that sufficiently prevents shorting [Yoshida column 5, columns 15-18, and throughout].
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. T. LEONARD whose telephone number is (571)270-1681. The examiner can normally be reached Mon-Fri 8:30-5 EST.
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/M. T. LEONARD/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724