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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/4/2026 has been entered.
Status of Claims
Claims 1-6, 8-13, & 15-24 are pending in the application. Claims 15-24 are withdrawn. Claims 1-6 & 8-13 were rejected in the office action mailed 2/4/2026. Claims 1-6 & 8-13 are presently examined.
Response to Amendment / Arguments
The 5/4/2026 amendment, in response to the 2/4/2026 office action, has been entered. Applicant’s claim amendments overcame all 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections.
Applicant's arguments and claim amendments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive.
Claim 1 was amended to state that “the margin insulating layer and the solid electrolyte layer have a boundary therebetween”.
The specification doesn’t define a “boundary” between the margin insulating layer 150 and the solid electrolyte layer 130; however, several of the figures (e.g. figure 1) do show a line (i.e. “boundary”) between these two structures. Thus, the issue is the meaning of this line / boundary in the drawings.
Applicant argues that the boundary can be “a result of using different materials and/or different manufacturing steps (see FIG. 5) to form the margin insulating layer 150 and the solid electrode layer 130”. Examiner agrees that this is one possible interpretation of “boundary”; however, the specification fails to require this interpretation.
Although claims are interpreted in light of the specification, specification limitations should not be read into the claims “absent clear disclaimer in the specification” MPEP 2111.01(I). Here, there is no such clear disclaimer. Examiner won’t read different materials across this boundary (i.e. between the margin insulating layer and the solid electrolyte layer) unless Applicant adds this to the claims, and unless there is support in the specification for such amendment.
As discussed in the 2/4/2026 office action, the present specification teaches that material of the margin insulating layer and the solid electrode layer can be the same (paragraphs 20, 30, 76). It would not be appropriate to now read into the claims that adding this boundary means that these structures must be made of different materials.
Also, it would not be appropriate to now read into the claims that the boundary means a material composition or material property difference simply because the specification recites a method in which these structures are applied in different steps. If method steps (product-by-process) are added into the claims, then Examiner will examine the claims based on the effect of this method on the battery, including on the boundary. The present claims, however, lack any product-by-process claim limitations.
Due to lack of any clear and definite definition of “boundary” in the specification and figures, Examiner looks to the dictionary. Dictionary definitions of “boundary” include “something that indicates or fixes a limit or extent”1, “a line or limit where one thing ends and another begins”2, or “something (such as a river, a fence, or an imaginary line) that shows where an area ends and another area begins”3. Along with these definitions, these dictionaries provide examples of a real estate boundary between adjacent properties, a boundary between mountain ranges, and a city boundary.
For present examination, “boundary” means an imaginary dividing line between different regions. There is no required material composition or property difference between these different regions.
Adding this imaginary boundary line to claim 1 doesn’t overcome the 35 U.S.C. 103 rejection. The structure of the prior art remains the same. Claiming different regions, by designating an imaginary boundary line, doesn’t make the claim patentable over prior art that fails to teach that imaginary boundary line.
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.
Claims 1-6 & 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over US20210384550A1 (Kumagae).
With regard to claim 1, Kumagae teaches the following claim limitations:
An all-solid-state battery (paragraph 75) comprising:
a first electrode layer (Paragraphs 76, 91, & 94; figures 1, 2A, & 6B: positive electrode layer 10A. “1st electrode” in Figure A below) that includes a first current collector (Paragraph 94; figure 6B: sub-collector layer 40. “1st CC” in Figure A below) and a first active material layer (Paragraph 94; figure 6B: positive electrode sub-active material layers 10′A. “1st active” in Figure A below) disposed on at least one side of the first current collector (40);
a solid electrolyte layer (Paragraph 76; figures 1 & 2A: solid electrolyte layer 20. Paragraph 84: solid electrolyte layer can be an insulating material. “SEL” in Figure A) disposed on the first electrode layer (10A) in a stack direction; and
a margin insulating layer (“MIL” in Figure A) disposed laterally on an edge (Figure A) of the active material layer (10′A),
wherein the first current collector (40) comprises a first body portion (Figure A) on which the active material layer (10’A) is disposed, and a first tab portion (Figure A) having a smaller width than a width of the first body portion and extending laterally to protrude from an edge of the body portion (figures 1-2B & 4A-4B),
the margin insulating layer is disposed laterally on the first body portion (Figure A) and surrounds (figures 1-2B & 4A-4B) the first tab portion (Figure A), and
the margin insulating layer and the solid electrolyte layer have a boundary therebetween (Figure A)
Figure A: Annotated, Partial Kumagae Figure 6B
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879
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Kumagae refers to the battery in figures 1, 2A, & 6B as embodiments, so is therefore missing one embodiment showing all the claim limitations. Both embodiments achieve Kumagae’s objectives of reducing the contact area between the electrode layer and an external terminal (paragraph 82). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to combine Kumagae’s embodiments in figures 1, 2A, & 6B, in order to reduce contact area between the electrode layer and an external terminal.
With regard to claims 2-3, Kumagae teaches the limitations of claim 1 as described above. Kumagae also teaches the following limitations of claims 2-3 (Figure B below):
Claim 2
the first tab portion of the first current collector extends from a center of a width direction of the first body portion
Claim 3
the margin insulating layer is divided by the first tab portion and is disposed on both sides of the first tab portion in the width direction
Figure B: Annotated Kumagae Figure 1
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With regard to claim 4, Kumagae teaches the limitations of claim 1 as described above. Kumagae also teaches the following claim 4 limitation:
the margin insulating layer surrounds along the edge of the first active material layer (figures 1-2B & 4A-4B; Figure A above)
With regard to claim 5, Kumagae teaches the limitations of claim 1 as described above. Kumagae also teaches the following claim 5 limitation:
the margin insulating layer is stacked on the solid electrolyte layer (Figure A above)
With regard to claim 6, Kumagae teaches the limitations of claim 1 as described above. Kumagae also teaches the following limitation of claim 6:
the margin insulating layer has an electrical conductivity of 1.0x10-10 S/cm or less
Kumagae teaches that the solid electrolyte layer 20 can be an insulating material (paragraph 84), and that the insulating material is non-conductive (paragraph 63). Examiner defines part of Kumagae’s solid electrolyte layer 20 to be the claimed solid electrolyte layer, and another part to be the claimed margin insulating layer. Note that claim 1 doesn’t distinguish between the claimed solid electrolyte layer and the margin insulating layer except by location.
With regard to claims 8-9, Kumagae teaches the limitations of claim 1 as described above. Kumagae also teaches the following limitations of claims 8-9 (paragraphs 76, 91, & 94; figures 1, 2A, & 6B; Figure A above):
Claim 8
the first current collector is a positive current collector (Paragraph 94; figure 6B: sub-collector layer 40. “1st CC” in Figure A above) and the first active material layer (Paragraph 94; figure 6B: positive electrode sub-active material layers 10′A. “1st active” in Figure A above) is a positive electrode active material layer (paragraph 94: 10’A), and
the all-solid-state battery further comprises a negative current collector (Paragraph 91: negative electrode layer 10B includes sub-collector layer 40. “neg. CC” in Figure A above) and a negative electrode active material layer (Paragraph 91: negative electrode layer 10B includes negative electrode sub-active material layers 10′B. “neg. active” in Figure A above) disposed on at least one surface of the negative current collector (paragraph 91: negative electrode layer 10B includes sub-collector layer 40), and
the solid electrolyte layer is disposed between the positive current collector and the negative current collector (“MIL” in Figure A above)
Claim 9
the margin insulating layer (Figure A above) is disposed laterally on an edge of the negative electrode active material layer (10’B)
With regard to claim 10, Kumagae teaches the limitations of claims 1 & 8 as described above. Kumagae also teaches the following claim 10 limitation (paragraphs 83, 91, & 94; figures 1, 2A-2B, & 6B):
the negative current collector (40) comprises a second body portion (12B) on which the negative electrode active material layer (10’B) is disposed, and
a second tab portion (11A & 11B) having a smaller width (W1) than a width (W1) of the second body portion (12B) and extending laterally to protrude from an edge of the second body portion
With regard to claim 11, Kumagae teaches the limitations of claims 1, 8, & 10 as described above. Kumagae also teaches the following claim 11 limitation:
the margin insulating layer is disposed laterally on the second body portion of the negative current collector and surrounds the second tab portion of the negative current collector (figure 2A)
With regard to claim 12, Kumagae teaches the limitations of claims 1, 8, & 10 as described above. Kumagae also teaches the following claim 12 limitation:
the first tab portion (11A) of the positive current collector extends from the body portion (12A) of the positive current collector in a direction opposite to a direction in which the second tab portion (11B) of the negative current collector extends from the second body portion (12B) of the negative current collector (figure 1)
With regard to claim 13, Kumagae teaches the limitations of claims 1 & 8 as described above. Kumagae also teaches the following claim 13 limitation:
the margin insulating layer surrounds along the edge of the positive electrode active material layer or the negative electrode active material layer (figures 1, 2A, & 6B)
Conclusion
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
1 https://www.merriam-webster.com/dictionary/boundary
2 https://www.dictionary.com/browse/boundary
3 https://www.britannica.com/dictionary/boundary
Prosecution Insights