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 24 April 2026 has been entered. Claims 2 and 5 have been canceled. The amendments to Claims 4 and 6 have overcome the 35 U.S.C. § 112 rejections specific to those claims set forth in the previous office action mailed 27 January 2026. However, amendments to Claim 1 have not overcome the 35 U.S.C. § 112 rejection set forth in the previous office action mailed 27 January 2026 as set forth below. Claims 1, 3, 4, and 6–15 are pending in the application. Claims 8–15 are withdrawn from consideration.
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, 3, 4, 6, and 7 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 1 recites the limitation wherein the current collector in the positive electrode or the negative electrode that does not include an electrode active material layer directly faces the solid electrolyte layer in lines 8–10. There is insufficient antecedent basis for the term the positive electrode or the negative electrode that does not include an electrode active material layer in the claim.
In light of the above, for the purposes of this Office Action, Claim 1 has been interpreted as follows:
An all-solid-state battery comprising:
a positive electrode;
a solid electrolyte layer; and
a negative electrode,
wherein at least one of the positive electrode and the negative electrode comprises a current collector having a thickness of less than 5 µm,
wherein one of the positive electrode or the negative electrode does not include an electrode active material layer,
wherein the current collector comprised in the positive electrode or the negative electrode that does not include an electrode active material layer is in direct contact with the solid electrolyte layer, and
wherein the current collector in direct contact with the solid electrolyte layer is thermally treated together with the solid electrolyte layer.
Claims 3, 4, 6, and 7 are further rejected as they depend upon Claim 1 and do not resolve the indefinite language described 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, and 4 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Yamauchi (US 2020/0067134 A1).
Regarding Claim 1, Yamauchi discloses an all-solid-state battery (see power storage device 11, [0040], FIG. 2, which can be an all-solid-state sodium-ion secondary battery, [0040]) comprising:
a positive electrode (see positive electrode layer 14, [0040], FIG. 2);
a solid electrolyte layer (see solid electrolyte 2, [0020], FIG. 1; see also solid electrolyte 12, [0040], FIG. 2); and
a negative electrode (see negative electrode layer 3, [0020], FIG. 1; see also negative electrode layer 13, [0040], FIG. 2),
wherein the negative electrode (3,13) comprises a current collector (see the negative electrode layer 3 can also function as a negative electrode current collector, [0039]) having a thickness of 0.3 to 3 µm ([0026]),
wherein the negative electrode (3,13) does not include an electrode active material layer (as Yamauchi [0039] discloses that the negative electrode (3,13) acts as a current collector, and as Yamauchi does not disclose any other separate, discrete layer of the negative electrode (3,13) which specifically acts as an electrode active material layer and not a current collector, it can be understood that the negative electrode (3,13) does not include an electrode active material layer),
wherein the current collector comprised in the negative electrode (3,13) that does not include an electrode active material layer is in direct contact with the solid electrolyte layer (2) ([0020], [0023], FIG. 1, 2).
Yamauchi further discloses wherein the current collector in direct contact with the solid electrolyte layer (2) is thermally treated together with the solid electrolyte layer (2) ([0023]). It is noted, however, that this limitation are considered to be product-by-process limitations, 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).
Regarding Claim 3, Yamauchi discloses the all-solid-state battery as set forth above. Yamauchi further discloses wherein the current collector in direct contact with the solid electrolyte layer (2) comprises a metal selected from the group consisting of Zn, Si, and Mg ([0021]).
Regarding Claim 4, Yamauchi discloses the all-solid-state battery as set forth above. Yamauchi further discloses wherein the current collector in direct contact with the solid electrolyte layer (2) does not comprise lithium metal ([0021] does not disclose lithium metal as a suitable choice for the negative electrode (3,13)).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi (US 2020/0067134 A1) as applied to Claims 1, 3, and 4 above, in view of Affinito et al. (US 2019/0267632 A1; art already of record).
Regarding Claim 6, Yamauchi discloses the all-solid-state battery as set forth above, but does not disclose wherein the current collector is formed through a deposition and transfer process.
Affinito teaches a current collector formed through a deposition and transfer process, by teaching deposition of a current collector on to a release layer formed on a carrier substrate ([0023], [0111]), and subsequent removal of the release layer and carrier substrate ([0025]). Affinito teaches ([0017]) that the process of forming electrode layers on a carrier substrate which is eventually removed can facilitate handling during fabrication and/or assembly.
Affinito is analogous to the claimed invention as it is in the same field of secondary batteries. 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 all-solid-state battery of Yamauchi such that the current collector is formed through a deposition and transfer process, as taught by Affinito, for the purpose of facilitating handling during fabrication and/or assembly.
It is noted, however, that these limitations are considered to be product-by-process limitations, 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).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi (US 2020/0067134 A1) as applied to Claims 1, 3, and 4 above, in view of Das et al. (“Sodium–oxygen batteries: a new class of metal–air batteries”).
Regarding Claim 7, Yamauchi discloses the all-solid-state battery as set forth above. Yamauchi further discloses wherein the all-solid-state battery (11) does not comprise lithium (Yamauchi does not require any components of the all-solid-state battery (11) to comprise lithium; note that while [0029] does disclose Li2O as a component of β-alumina and β”-alumina solid electrolytes, [0028] discloses that the solid electrolyte can instead be NASICON crystals, examples of which are listed in [0035] and do not include lithium).
Yamauchi does not disclose wherein the all-solid-state battery is a metal–air battery, instead disclosing that the all-solid-state battery is a sodium-ion battery ([0040]), but that the positive electrode (14) is not particularly limited ([0042]).
Das teaches that sodium–air batteries, a type of metal–air battery, have exceptionally high theoretical specific energies and higher energy density (p. 12624 ¶ “The argument for…”).
Das is analogous to the claimed invention as it is in the same field of secondary batteries. 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 all-solid-state battery of Yamauchi such that it is a sodium–air battery for the purpose of achieving exceptionally high theoretical specific energies and higher energy density.
Response to Arguments
Applicant’s arguments in the Remarks filed 24 April 2026 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.
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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.
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725
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