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 .
DETAILED ACTION
This Office Action is in response to the communication filed on 12/26/25. Applicant’s arguments have been considered but are not found persuasive. This Action is FINAL, as necessitated by amendment.
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-4 and 6, in the reply filed on 4/28/23 is acknowledged. Claims 14-20 are withdrawn.
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 1-4 and 6 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 first layer consisting essentially of a first plurality of active material particles and, optionally, a first conductive additive, adhered together by a first binder” and “the second layer consisting essentially of a second plurality of active material particles and, optionally, a second conductive additive, adhered together by a second binder”, which is indefinite because it is unclear if “consisting essentially of” limits the scope of the claim to specified materials that do not materially affect the basic and novel characteristics of the claimed invention regarding the first layer and/or the second layer since the first layer and/or second layer may contain “optional” components. A conductive additive would materially affect the first layer and/or the second layer (i.e., affect the conductivity of the layer).
Furthermore, MPEP 2111.03 (III) recites the following regarding the transitional phrase “consisting essentially of”.
For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (“PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention.”). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003). If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989) (“Although ‘consisting essentially of’ is typically used and defined in the context of compositions of matter, we find nothing intrinsically wrong with the use of such language as a modifier of method steps. . . [rendering] the claim open only for the inclusion of steps which do not materially affect the basic and novel characteristics of the claimed method. To determine the steps included versus excluded the claim must be read in light of the specification. . . . [I]t is an applicant’s burden to establish that a step practiced in a prior art method is excluded from his claims by ‘consisting essentially of’ language.”).
Therefore, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” in at least claim 1 will be construed as equivalent to “comprising”.
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.
Claim(s) 1-4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kurihara, US 2017/0040615 A1.
Kurihara teaches a negative electrode for nonaqueous electrolyte secondary batteries. The negative electrode agent comprises, at least, an active material and a binder wherein the binder contains a first water-soluble polymer of linear polycarboxylate and a second water-soluble polymer of linear polycarboxylic acid. The first water-soluble polymer has a crosslinked structure of high molecular weight, and the second water-soluble polymer has a low molecular weight (abstract).
As the active, SiOx is preferred (x is from 0 to 1.5) because a satisfactory amount of absorption or release of Li is more ensured. Graphite may be added thereto as an active material. The addition of graphite enables the formation of an electrode that is reduced in irreversible capacity over an electrode made of SiOx alone [0039-0040].
Kurihara does not teach a first layer and a second layer as recited by at least claim 1. Kurihara teaches a single active material layer adhered to a current collector (Figure 1). However, the invention as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made because one of skill would have found the first and second layers of the claimed invention obvious over the single layer of Kurihara. Kurihara teaches the single active material layer comprising first active material particles of SiOx, second active material particles of graphite, a first binder crosslinked more than a second binder and a second binder directly coated on a current collector to form a negative electrode.
As to the crosslinking treatment and the crosslinking agent, a polycarboxylic acid salt is used as a first water-soluble polymer and a polycarboxylic acid is used as a second water-soluble polymer. Both are contained in the binder of the active material layer 2 [0033]. A crosslinking reaction of the polycarboxylic acid salt can be carried out using a crosslinking agent [0034].
Although claim 1 recites that the first and second layers include specific components, the first and second layer are open to including other components by virtue of the phrase “optionally” and, furthermore, the transitional phrase “consisting essentially of” being construed as equivalent to the open transitional phrase "comprising." The present specification defines “comprising” ("Comprising," 'including,' and 'having' (and conjugations thereof) are used interchangeably to mean including but not necessarily limited to, and are open-ended terms not intended to exclude additional, unrecited elements or method steps."). See also the 35 USC 112 rejection above.
Kurihara discloses an active material layer disposed on a current collector, the active material layer including a binder containing two types of water-soluble polymers, a first water-soluble polymer that has been subjected to crosslinking treatment (corresponding to the first binder recited in claim 1) and a second water-soluble polymer that has not been subjected to crosslinking treatment (corresponding to the second binder), and an electrode active material. Kurihara. Importantly, Kurihara discloses that although Figure 1 depicts the active material layer as a single layer, "it may be in the form of two or more layers." (emphasis added). Thus, Kurihara expressly suggests two active material layers, each of which would contain the first water-soluble binder (first binder), second water-soluble polymer (second binder), and the electrode active material. Thus, it would have been obvious to have formulated Kurihara in include two active material layers over the current collector. In doing so, one of ordinary skill in the art would have arrived at the multilayered electrode recited in claim 1, where the first layer “comprises” the first crosslinked water-soluble polymer (first binder) and a first plurality of active material particles, and where the second layer “comprises” the second water-soluble polymer (second binder) and a second plurality of active material particles because at least claim 1 does not exclude the presence of both binders in both the first and second layers by virtue of the open transitional phrase.
As to recitation that “the first binder forms a crosslinked matrix, wherein the crosslinked matrix suppresses expansion of the first plurality of active material particles”, Kurihara discloses that the first crosslinked water-soluble polymer provides suppressed strain of volume expansion during charge.
Response to Arguments
Applicant's arguments filed 12/26/25 have been fully considered but they are not persuasive. See Board decision of 10/29/25 and the 35 USC 112, 2nd, rejection above.
Applicant argues Kurihara fails to teach or suggest a first layer consisting essentially of a first plurality of active material particles adhered together by a first binder and a second layer consisting essentially of a second plurality of active material particles adhered together by a second binder, wherein the first binder is more crosslinked than the second binder. Applicant argues Kurihara instead discloses a single electrode layer comprising a mixture of binder materials.
The Board decision of 10/29/25 clearly states Kurihara at least suggests the active material layer "may be in the form of two or more layers." (emphasis added). Thus, this argument has already been addressed by the Board.
Furthermore, the claims have been rejected under 35 USC 112 regarding the transitional phrase “consisting essentially of” in at least claim 1. Furthermore, there is nothing in at least claim 1 that recites the “first binder” cannot include multiple binder polymers and/or the “second binder” cannot include multiple binder polymers. Examiner points to at least claim 2 that recites “the first binder comprises” such that the claims encompass an embodiment wherein the first binder may further comprise other binder materials. Note claim 3 additionally recites “the first binder comprises”. At least claim 1 does not require multiple electrodes layers having different binder compositions as the “first binder” and “second” binder are not specifically limited.
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 extension fee 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 date of this final action.
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/TRACY M DOVE/ Primary Examiner, Art Unit 1725