DETAILED CORRESPONDENCE
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 Group I (Claims 1-2, 4, and 6-9) in the reply filed on December 15th, 2025 is acknowledged. The traversal is on the grounds that should the claims of Group I be allowable, the claims of Group II (Claims 10 and 13), would therefore be allowable based on their lack of distinction.
The Office has provided a reason for patentable distinctness between the restricted claims of Groups I, II, and III as required in MPEP section 803, which only necessitates a provision of reasons and/or examples to support conclusions. The Office “need not cite documents to support the restriction requirement in most cases.”
The requirement is still deemed proper and is therefore made FINAL.
Therefore, the claims under consideration are 1-2, 4, and 6-9.
Claims 10 and 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Groups II and III, there being no allowable generic or linking claim.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2020-177267, filed on October 22nd, 2020.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on April 20th, 2023 and September 3rd, 2025 have been received and considered by the Examiner.
Claim Interpretation
All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Status
In response to the communication received on December 15th, 2025:
Claims 1-2, 4, 6-10, and 13-14 are pending in the current application. Claims 1, 4, 6-8, 10, and 13-14 have been amended. Claims 10 and 13-14 have been withdrawn following the restriction requirement mailed on November 14th, 2025. Claims 3, 5, and 11-12 have been cancelled.
Prior Art
Saitou US PG Publication 2019/0280283 (“Saitou”)
Claim Objections
Claims 4 and 6-7 are objected to because of the following informalities:
Claims 4 and 6-7, line 3 (of each listed claim) recite the limitation “Wherein.” For grammatical purposes this should most likely read (with emphasis) “when.” The use of capitalization in the middle of this claim limitation is improper. It also appears that this claim is intended to further limit the range as defined in condition (2) of Claim 1, and therefore, the use of “when” would be better suited than the use of “wherein” in this claim limitation.
Appropriate correction is required.
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, 4, and 6-9 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 is missing a conjunction between conditions (2) and (3) in lines 12-15. Potential conjunctions include “and” and “or.” The selection of the conjunction may have significant impact on the scope of the claim limitations. For example, the conjunction “and” would require the positive electrode to simulatenously satisfy all three conditions. The conjunction “or” would only require at least one of the conditions to be satisfied. For purposes of examination, it is interpreted that all three conditions are simultaneously met.
Further clarification is required.
Claims 2, 4, and 6-9 are rejected as being dependent upon a rejected claim.
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:
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.
Claims 1-2, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Saitou US PG Publication 2019/0280283.
Regarding Claim 1, Saitou discloses a positive electrode for a lithium-ion battery (non-aqueous electrolyte secondary battery) ([0022, [0049], entire disclosure dependent upon throughout) comprising a positive-electrode mixture layer 103 and a conductive auxiliary agent (assistant) on at least one surface of a current collector layer 101 (which meets the claim limitation of one surface or both surfaces) (Abstract, [0014]-[0017]),
wherein Rs is an interface resistance (Ωcm2) between the positive-electrode mixture layer 103 and the current collector 101 with a value between 0.01 and 0.08 Ωcm2 ([0045]-[0046]), pv is a volume resistivity (Ωcm) of the positive-electrode mixture layer 103 with a value between 0.55 and 2.5 Ωcm ([0042]), and d is a thickness (cm) of the positive-electrode mixture layer 103 on one surface of the current collector with a value between 10 and 250 µm (equivalent to 0.001 cm and 0.025 cm) ([0072]),
such that the skilled artisan would recognize that Saitou discloses:
(1) when the thickness of the positive electrode mixture layer 103 is 35 µm or more and less than 58 µm, Rs/(pvxd) is between 0.69 (Rs = 0.01 Ωcm2; pv = 2.5 Ωcm; d = 0.0058 cm) and 41.56 (Rs = 0.08 Ωcm2; pv = 0.55 Ωcm; d = 0.0035 cm) (which encapsulates the claimed range of 1.0±0.2)1;
(2) when the thickness of the positive electrode mixture layer 103 is 58 µm or more and less than 68 µm, Rs/(pvxd) is between 0.59 (Rs = 0.01 Ωcm2; pv = 2.5 Ωcm; d = 0.0068 cm) and 25.08 (Rs = 0.08 Ωcm2; pv = 0.55 Ωcm; d = 0.0058 cm) (which encapsulates the claimed range of 0.55 to 1.6)1; and
(3) when the thickness of the positive electrode mixture layer 103 is 68 µm or more and 80 µm or less, Rs/(pvxd) is between 0.50 (Rs = 0.01 Ωcm2; pv = 2.5 Ωcm; d = 0.008 cm) and 21.39 (Rs = 0.08 Ωcm2; pv = 0.55 Ωcm; d = 0.0068 cm) (which encapsulates the claimed range of 0.55 to 10)1.
1 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).
Regarding Claim 2, Saitou teaches the instantly claimed positive electrode according to Claim 1, and Saitou discloses wherein the thickness of the positive-electrode mixture layer 103 on one surface of the current collector is between 10 and 250 µm, more specifically between 40 and 100 µm (which overlaps the claimed range of 38 µm or more and less than 58 µm)1.
Regarding Claim 4, Saitou teaches the instantly claimed positive electrode according to Claim 1, and the skilled artisan would recognize that Saitou discloses:
(2) when the thickness of the positive electrode mixture layer 103 is 58 µm or more and less than 68 µm, Rs/(pvxd) is between 0.59 (Rs = 0.01 Ωcm2; pv = 2.5 Ωcm; d = 0.0068 cm) and 25.08 (Rs = 0.08 Ωcm2; pv = 0.55 Ωcm; d = 0.0058 cm) (which encapsulates the claimed range of 0.8 to 1.26)1.
Regarding Claim 6, Saitou teaches the instantly claimed positive electrode according to Claim 1, and the skilled artisan would recognize that Saitou discloses:
(3) when the thickness of the positive electrode mixture layer 103 is 68 µm or more and 80 µm or less, Rs/(pvxd) is between 0.50 (Rs = 0.01 Ωcm2; pv = 2.5 Ωcm; d = 0.008 cm) and 21.39 (Rs = 0.08 Ωcm2; pv = 0.55 Ωcm; d = 0.0068 cm) (which encapsulates the claimed range of 0.55 to 3.0)1.
Regarding Claim 7, Saitou teaches the instantly claimed positive electrode according to Claim 1, and the skilled artisan would recognize that Saitou discloses:
(3) when the thickness of the positive electrode mixture layer 103 is 68 µm or more and 80 µm or less, Rs/(pvxd) is between 0.50 (Rs = 0.01 Ωcm2; pv = 2.5 Ωcm; d = 0.008 cm) and 21.39 (Rs = 0.08 Ωcm2; pv = 0.55 Ωcm; d = 0.0068 cm) (which encapsulates the claimed range of 0.7 to 1.7)1.
Regarding Claim 8, Saitou discloses a lithium-ion battery 150 (non-aqueous electrolyte secondary battery) ([0022, [0049], [0100], entire disclosure dependent upon throughout) comprising:
a positive electrode 120 ([0101]);
a negative electrode 130 ([0101]);
a separator interposed between the positive electrode and the negative electrode within an electrolyte layer ([0101]); and
an electrolyte which may comprise a non-aqueous solvent ([0101], [0105]),
wherein the positive electrode is the positive electrode for the non-aqueous electrolyte secondary battery as described in the rejection of Claim 1 above ([0101]).
Regarding Claim 9, Saitou teaches the instantly claimed battery according to Claim 8, and Saitou discloses wherein the negative electrode includes a lithium alloy including a metal based material ([0055]-[0056])2.
Saitou fails to explicitly disclose wherein the negative electrode includes an aluminum or aluminum alloy foil. However, Saitou discloses that aluminum is beneficial for its price, ease of procurement, and electrochemical stability ([0074]) and that aluminum based lithium alloys are suitable materials for electrodes ([0051]).
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant application to modify the battery of Saitou such that the negative electrode includes a lithium alloy comprising aluminum (which meets the claim limitation of both an aluminum foil or an aluminum alloy foil and a Li-Al alloy) because aluminum is beneficial for its price, ease of procurement, and electrochemical stability and because aluminum based lithium alloys are suitable materials for electrodes, as taught by Saitou.
Claim 9 is considered product-by-process claim. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
2The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Conclusion
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/O.M.R./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729