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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/8/2026 has been entered.
Status of Claims
Claims 1-2 & 6 are pending in the application and are presently examined. Claims 1-3 & 6 were rejected in the 4/9/2026 office action. Applicant cancelled claim 3.
Response to Amendment / Arguments
The 7/8/2026 amendment, in response to the 4/9/2026 office action, has been entered. Applicant’s claim amendments overcame the 35 U.S.C. 103 rejections; nevertheless, the claims remain rejected under 35 U.S.C. 103 due to additional prior art.
Claim Objections
Claims 2 & 6 are objected to because of the following informalities:
Claim 2 states “an all-solid state secondary battery” and “a negative electrode material mixture”. Claim 1 already introduced these components, so the above phrases in claim 2 should be amended as follows:
“[[an]]the all-solid state secondary battery”
“[[a]]the negative electrode material mixture”.
Claim 2 recites “a molded body” and “a pellet”. It seems that both phrases refer to the same component. Examiner suggests using the same term for both, such as “a molded body” then “the molded body”.
Claim 6 states “An all-solid state secondary battery comprising… a negative electrode”. Claim 1 already introduced these components, so they should be introduced with “the” instead of “a”. Examiner suggests amending claim 6 as follows, in order to resolve the above issues, and for simplicity:
“6. [[An]]The all-solid-state secondary battery of claim 1 comprising a positive electrode, [[a]]the negative electrode of claim 1, and a sulfide-based solid electrolyte layer between the positive electrode and the negative electrode
Claim Rejections - 35 USC § 103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US20130148265A1 (Okuno) in view of US20150207177A1 (Ose) and US20220384790A1 (Kim).
Okuno teaches the following claim 1 limitations:
A negative electrode (paragraphs 203 & 205: negative electrode)… comprising a negative electrode material mixture that contains a negative electrode active material (paragraph 210: hard carbon), a conductive aid (paragraphs 125 & 210: carbon black)…
wherein the negative electrode material mixture contains hard carbon as the negative electrode active material (paragraph 210: hard carbon),
wherein a proportion of the hard carbon in the negative electrode active material is 100 mass% (Paragraph 57: “As the active material, at least one selected from the group consisting of… hard carbon”. Okuno states “at least one”, so Okuno teaches that the active material can be only hard carbon.),
Okuno fails to teach that the negative electrode is for an all-solid state secondary battery. MPEP 2114(II) provides the law for this claim limitation:
“‘[A]pparatus claims cover what a device is, not what a device does.’ Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
The claim 1 limitation, that the negative electrode is for an all-solid state secondary battery, is an intended use and does not limit the scope of the claim for patent examination.
Okuno fails to teach that the negative electrode material mixture includes a sulfide-based solid electrolyte. Ose is directed to a “battery suitable for high rate charging” (abstract). Ose’s anode active material layer includes 10 to 80 mass% sulfide solid electrolyte (abstract; paragraph 45). It would have been obvious, to one of ordinary skill in the art, for Okuno’s negative electrode to include 10 to 80 mass% sulfide solid electrolyte, as taught by Ose, for a battery suitable for high rate charging.
Claim 1 also states:
wherein an amount of the hard carbon in the negative electrode material mixture is 20 to 80 mass%
Okuno teaches a negative electrode with 87 mass% hard carbon (paragraph 210). Okuno’s negative electrode, however, lacks a sulfide-based solid electrolyte, which is part of the claimed negative electrode material mixture. The calculation of the mass% of Okuno’s hard carbon is incomplete without included the amount of sulfide-based solid electrolyte.
As discussed above, Ose’s anode active material layer includes 10 to 80 mass% sulfide solid electrolyte (abstract; paragraph 45). Adding Ose’s sulfide solid electrolyte to Okuno’s negative electrode would result in the following mass% hard carbon:
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Okuno modified by Ose would thus result in 11 to 73 mass% hard carbon in the negative electrode.
Therefore, modified Okuno’s 11 to 73 mass% range overlaps the claimed 20 to 80 mass% range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Okuno’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the claimed range is an obvious variant of Okuno’s range.
Claim 1 also states:
the negative electrode contains carbon nanotubes… as the conductive aid
Okuno teaches that the negative electrode can include carbon nanotubes (abstract; paragraph 99); however, in Okuno’s example negative electrode discussed above, Okuno uses carbon black as the conductive aid (paragraph 210) instead of carbon nanotubes.
Kim teaches use of carbon nanotubes and carbon black as optional negative electrode conductive agents (claim 10). Kim thus recognizes the equivalency of carbon nanotubes and carbon black as negative electrode conductive agents. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to replace Okuno’s carbon black in the paragraph 210 example with Kim’s carbon nanotubes. This replacement is merely the selection of functionally equivalent negative electrode conductive agents recognized in the art. One of ordinary skill in the art would have a reasonable expectation of success in making this replacement.
Claim 1 also states:
the… carbon nanotubes… have a fiber diameter of 0.8 to 20 nm and an aspect ratio of 20000 or more
Okuno teaches 0.1 to 50 nm diameter and 500 nm to 100 μm (100,000 nm) length for the carbon nanotubes (paragraphs 30-31). Thus, Okuno’s carbon nanotube aspect ratio range is the following:
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Therefore, (A) Okuno’s 0.1 to 50 nm carbon nanotube diameter range overlaps the claimed 0.8 to 20 nm diameter range; and (B) Okuno’s 10 to 1,000,000 aspect ratio range overlaps the claimed ≥ 20,000 aspect ratio range. MPEP 2144.05 (II)(A) provides the law for this issue:
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Given that Okuno’s ranges are similar to and substantially overlap the claimed ranges, and further given the fact that no criticality is disclosed for the claimed ranges, the claimed ranges are obvious variants of Okuno’s ranges.
Claims 2 & 6 are rejected under 35 U.S.C. 103 as being unpatentable over US20130148265A1 (Okuno) in view of US20150207177A1 (Ose) and US20220384790A1 (Kim), as applied to claim 1, and further in view of US20200044284A1 (Fujino).
With regard to claim 2, modified Okuno teaches the limitations of claim 1 as described above. Okuno, however, fails to teach the following limitation of claim 2, which is taught by Fujino:
a molded body obtained by molding a negative electrode material mixture that contains the negative electrode active material, the conductive aid, and the sulfide-based solid electrolyte into a pellet (paragraphs 37, 42, 50, & 116: anode layer 2 includes active material, conductive material, and sulfide solid electrolyte mixed in a slurry, pasted on an anode current collector, then dried)
Fujino is direct to a battery with reduced volume change due to charge and discharge (abstract). It would have been obvious, to one of ordinary skill in the art, for modified Okuno’s negative electrode material mixture to be molded into a pellet, as taught by Fujino, as part of a battery with reduced volume change due to charge and discharge.
With regard to claim 6, modified Okuno teaches the limitations of claim 1 as described above. Modified Okuno also teaches the following limitations of claim 6:
…battery (Okuno paragraph 98: electric storage device) comprising a positive electrode (Okuno paragraph 98; figure 1: positive electrode 2), a negative electrode (Okuno paragraph 98; figure 1: negative electrode 2)… wherein the all-solid-state secondary battery includes the negative electrode for the all-solid-state secondary battery according to claim 1 as the negative electrode (see discussion under claim 1 above)
Okuno, however, fails to teach the following limitations of claim 6, which are taught by Fujino:
An all-solid-state secondary battery (paragraphs 37 & 92: solid state battery 10, secondary battery)… a sulfide-based solid electrolyte layer (paragraphs 37 & 120; figure 1A: sulfide solid electrolyte layer 3) between the positive electrode (paragraph 37; figure 1A: cathode layer 1) and the negative electrode (paragraph 37; figure 1A: anode layer 2)
Fujino is directed to a battery with reduced volume change due to charge and discharge (abstract). It would have been obvious, to one of ordinary skill in the art, for modified Okuno’s negative electrode to be used in an all-solid-state secondary battery, with a sulfide solid electrolyte layer between a cathode layer and an anode layer, as taught by Fujino, for a battery with reduced volume change due to charge and discharge.
Conclusion
Prior art not relied upon, but made of record and considered pertinent to applicant's disclosure:
US20130244087A1 (Ma) teaches a negative electrode with a sulfide electrolyte, carbon nanotubes, and hard carbon (paragraphs 15-16; claim 4).
US20220311007A1 (Karisyuku) teaches a negative electrode with a sulfide electrolyte, carbon nanotubes, and non-graphitizable carbon [hard carbon] (paragraphs 43 & 49) for a lithium ion secondary battery with excellent heat dissipation (paragraph 7).
US20150162643A1 (Tagami) presents a ratio of sulfide-based solid electrolyte to negative electrode active material is 20 to 50:80 to 50 (paragraph 9).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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/R.G.W./Examiner, Art Unit 1721
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