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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/22/2025 has been entered.
Claim Objections
As an initial matter, Examiner notes that the amendment to Claim 1 does not accurately depict the changes made to the claim from the previously presented set of claims (see at least lines 8-9 of currently presented claims in contrast to lines 8-9 of the claim set filed 05/19/2025).
Claim 1 is further objected to because Claim 1 recites, “wherein the protective layer comprises: a matrix comprising a composite comprising a metal sulfide and a carbon component, wherein the metal sulfide are uniformly distributed onto the surface of the carbon component” (emphasis added). This limitation appears to contain a grammatical error and should likely read “wherein the metal sulfide is uniformly distributed…” (emphasis added).
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, 3-5 and 7-9 are is 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, “wherein the metal sulfide comprises a compound represented by MxSy, wherein M is a metal which does not form an alloy through reaction with lithium ions, and M comprises one or more of Mo, W, Cu, Co, Ti, Ni, and Fe, 1≤x≤3 and 0.5≤y≤4” (emphasis added). Claim language defined by a Markush grouping requires selection from a closed group “consisting of” the alternative members (see MPEP 2117). Here, since the Markush grouping requires a material selected from an open list of alternative (i.e. selected from a group “comprising” the alternatives), the claim is indefinite since it is unclear what other alternatives are intended to be encompassed by the claims (see MPEP 2173.05(h)(I)). As such, Claim 1 and dependent Claims 3-5 and 7-9 are rejected as being indefinite. For the sake of compact prosecution, it will be interpreted that this limitation should read “and M is selected from one or more of the group consisting of Mo, W, Cu, Co, Ti, Ni, and Fe; 1≤x≤3 and 0.5≤y≤4” (N.B.: a semicolon has also been added between the list of possible M metals and the possible ranges of x and y in order to clearly separate the two concepts for this interpretation).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-5 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable Zhamu et al. (US-20100143798-A1) in view of Kim et al. (US-20220045354-A1) and in further view of Horie et al. (US-20210408639-A1) as evidenced by Pol et al. (US-20120231352-A1).
Regarding Claims 1 and 7, Zhamu discloses a lithium secondary battery comprising an anode, a cathode, and an electrolyte [0086]. Zhamu discloses that a wide range of electrolytes can be used for practicing the instant invention [0121]. Although non-aqueous and polymer gel electrolytes are most preferred, other types electrolytes can be used [0121]. Although Zhamu discloses a secondary battery, Zhamu does not teach the use of a solid electrolyte in a specific embodiment, and therefore Zhamu does not teach an all-solid-state battery.
Kim teaches an all-solid battery secondary battery including a solid electrolyte [0071-0072, 0079], wherein the solid electrolyte (930, Fig. 10) is positioned between an anode layer (920, Fig. 10) and a cathode layer (910, Fig. 10) [0124]. Kim teaches that an all-solid battery does not include a flammable organic solvent, and thus has a reduced risk of fire or explosion even when a short-circuit occurs [0065]. Advantageously, Kim teaches that all-solid batteries may have increased safety as compared with a lithium-ion battery using a liquid electrolyte [0004, 0065, 0069].
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have selected the electrolyte of Zhamu to be a solid electrolyte positioned between the anode layer and cathode layer as taught by Kim with a reasonable expectation that such a selection would result in a successful secondary battery with increased safety. By selecting the electrolyte to be a solid electrolyte, modified Zhamu renders obvious that the lithium secondary battery is an all-solid-state battery.
Zhamu discloses nanocomposite solid particles which can be used as the active material for either the anode or the cathode [0001, 0086, 0103, 0111]. Zhamu discloses that preparation procedures of a cathode or anode from active materials are well-known in the art [0111]. For example, when preparing a cathode, Zhamu discloses that a mixture including the cathode active material and a solvent can be coated onto a current collector, and the solvent can be removed to form a thin plate-like electrode [0111].
Therefore, although Zhamu does not specifically teach an embodiment wherein the anode active material is coated on an anode current collector or a specific embodiment wherein the cathode active material is coated on a cathode current collector, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have formed the electrodes by coating the anode active material on an anode current collector and by coating the cathode active material on a cathode current collector, with a reasonable expectation that such a process would result in a successful anode and a successful cathode for use in a lithium secondary battery.
Accordingly, modified Zhamu renders obvious an all-solid-state battery comprising:
an anode current collector;
a protective layer (corresponds to anode active material; [0099, 0103]) disposed on the anode current collector;
a solid electrolyte layer disposed on the protective layer;
a cathode active material layer [0107, 0111] disposed on the solid electrolyte layer; and
a cathode current collector disposed on the cathode active material layer [0111, 0113].
Zhamu discloses that the protective layer (anode active material layer) can comprise nanocomposite particles, wherein the nanocomposite particles include an electrode active material, nano graphene platelets (NGPs) and a protective matrix material [0086, 0099]. As detailed below, the electrode active material reads on the recited metal component, the NGPs read on the recited carbon component, and the matrix material reads on the recited metal sulfide.
Regarding the electrode active material, Zhamu discloses that there is no restriction on the type and nature of the anode active material, and the electrode active material can be selected from a variety of materials, including particles of tin (Sn), bismuth (Bi), or zinc (Zn) [0079-0080, 0103, 0115].
Therefore, although not disclosed in a specific embodiment, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the electrode active material to be metal particles of Sn, Bi, or Zn with a reasonable expectation that such a selection would result in a successful electrode active material for use in a protective layer. The use of metal particles of Sn, Bi, or Zn corresponds to the recited limitation of a metal component capable of alloying with lithium as required by Claim 1. The use of metal particles of Sn, Bi, or Zn also overlaps in scope with the recited metal components required by Claim 7.
The use of NGPs in the nanocomposite particles [Zhamu: 0067, 0071-0072], reads on the recited limitation of a carbon component as evidenced by the instant specification (instant specification: Pg. 2: ln 27- Pg. 3: ln 2).
Regarding the matrix material, Zhamu discloses that the matrix can be selected from a variety of materials, including a metal sulfide (Claim 6; [0072]).
Therefore, although not disclosed in a specific embodiment, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the matrix material to be a metal sulfide with a reasonable expectation that such a selection would result in a successful matrix material for use in a protective layer.
Although modified Zhamu does not explicitly teach a matrix which comprises “a composite” comprising the metal sulfide and the carbon component, or that the metal sulfide is “uniformly distributed” onto the surface of the carbon component, or that the metal component is “distributed in the matrix”, Zhamu discloses that the NGPs, electrode active material, and a matrix precursor can be ground together by ball milling to form the nanocomposite particles [0116, 0118, 0135].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have ball milled a metal component comprising Sn, Bi, or Zn (i.e. the electrode active material), the metal sulfide (i.e. the matrix material) and the carbon component (NGPs) together with a reasonable expectation that such a process would result in a successful nanocomposite particle. The process of ball milling the metal sulfide and the carbon component together is understood to inherently result in a composite, wherein the metal sulfide is uniformly distributed onto the surface of the carbon component, as evidenced by the instant specification (instant specification: Pg. 7: lns 19-20, 23-25; see MPEP 2112.01, I). Furthermore, as currently claimed, there is no structural difference between a metal component included in the composite and a metal component distributed in the matrix, since the matrix is recited as comprising the composite. Therefore, the process rendered obvious by modified Zhamu is understood to result in a protective layer which comprises “a matrix comprising a composite comprising a metal sulfide and a carbon component, wherein the metal sulfide is uniformly distributed onto the surface of the carbon component; and a metal component distributed in the matrix and capable of alloying with lithium”.
Zhamu discloses that the metal sulfide (matrix material) preferably comprises at least 2% of the total nanocomposite weight [0099]. The matrix material serves a protective function [0018, 0020, 0069-0070], and Zhamu discloses that a minimum amount of reinforced matrix is necessary to cushion volume expansion-induced stresses and strains to obtain a long cycle life [0085].
Zhamu also discloses that the carbon component (NGPs) preferably comprises 1% to 90% of the total nanocomposite weight [0099]. Zhamu discloses that the carbon component (NGPs) are very effective at enhancing the mechanical properties of a protective matrix and provide protection against volume change-induced stresses and strains in matrix, thereby enabling a high specific capacity to be maintained over a large number of cycles [0069, 0085, 0108].
Zhamu further discloses that the electrode active material preferably comprises 1% to 90% of the total nanocomposite weight [0099]. Zhamu discloses that it is desirable to have a high proportion of the metal component (electrode active material) in order to achieve a high lithium storage capacity [0085, 0108].
Therefore, although modified Zhamu does not specifically teach that the composite comprises the metal sulfide and the carbon component at a mass ratio of about 2:8 to 5:5, in seeking to strike a balance between the protective effect provided by the NGP-reinforced matrix material and the lithium storage capacity provided by the electrode active material, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the relative amounts of matrix material (metal sulfide), NGPs (carbon component) and electrode active material (metal component) (MPEP 2144.05, II). One of ordinary skill in the art would have had a reasonable expectation that optimizing the metal sulfide and the carbon component at a mass ratio of about 2:8 to 5:5 would result in a successful nanocomposite capable of use in an anode protective layer.
As laid out above, modified Zhamu renders obvious a protective layer comprising a carbon component (NGPs), a metal sulfide, and a metal component (Sn, Bi, or Zn). Although modified Zhamu discloses that the matrix comprises a metal sulfide (Zhamu: Claim 6; [0072]), Zhamu does not disclose the identity of the metal sulfide.
Horie teaches a lithium secondary battery including a positive electrode, a negative electrode, and a laminated separator [0003, 0009, 0089], wherein the negative electrode comprises an active material layer coated on a current collector [0111]. The active material layer corresponds to the protective layer of modified Zhamu.
Horie teaches that the negative electrode active material can be selected from various materials which can be used alone or in combination, including carbon materials, chalcogen compounds and metals such as Sn [0111-0114, 0118-0120]. Examples of the chalcogen compounds include sulfides of titanium (e.g. Ti2S3, TiS2, TiS), sulfides of iron (e.g. Fe3S4, FeS2, FeS), sulfides of molybdenum (e.g. Mo2S3, MoS2), and sulfides of tungsten (e.g. WS2) [0113, 0116].
Furthermore, Pol evidences that metal sulfides of Ti, Fe, Mo, and W are known metal sulfides for use in similar carbon composite materials [0007, 0058-0059].
The negative electrode active materials taught by Horie overlap in scope with the protective layer materials rendered obvious by modified Zhamu. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected the metal sulfide to be a sulfide of Ti, Fe, Mo, or W (i.e. Ti2S3, TiS2, TiS, Fe3S4, FeS2, FeS, Mo2S3, MoS2, WS2) with a reasonable expectation that such a metal sulfide would result in a successful anode protective layer for use in a lithium secondary battery (MPEP 2144.07). These metal sulfides read on the recited metal sulfide (i.e. M comprises one or more of Mo, W, Ti, and Fe, and 1≤x≤3 and 0.5≤y≤4). Since modified Zhamu renders obvious metal sulfides as claimed, the metals of these metal sulfides (i.e. Mo, W, Ti, and/or Fe) are understood to be metals which “do not form an alloy through reaction with lithium ions” (MPEP 2112.01, I-II).
The limitation, “wherein the metal sulfide reacts with lithium ions to produce lithium sulfide (Li2S) and a metal during charging and discharging of the all-solid-state battery, and lithium is stored between the anode current collector and the protective layer, and wherein the lithium sulfide, the metal, and the carbon component in the protective layer serve as migration paths for lithium ions and electrons” is an intended use limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then the limitation is met.
Here, modified Zhamu renders obvious a protective layer which is substantially similar to that recited in the instant application. Therefore, the reactivity of the protective layer with lithium ions during “charging and discharging” is understood to inherently proceed in the same manner as described in the instant application (see MPEP 2112.01, I-II). Specifically, since modified Zhamu renders obvious metal sulfides as recited in Claim 1, the reactivity of the metal sulfide with lithium ions during “charging and discharging” is understood to inherently produce “lithium sulfide and a metal” as evidenced by the instant specification (instant specification: Pg. 7: lns 15-30 – Pg. 8: lns 1-8). Additionally, since the protective layer of modified Zhamu comprises the required metal sulfide, carbon component and metal component, the all-solid-state battery is understood to inherently store lithium between the anode current collector and the protective layer during “charging and discharging”, as evidenced by the instant specification (instant specification: Pg. 7: lns 15-18). Furthermore, since modified Zhamu renders obvious that the composite comprises the metal sulfide and the carbon component at a mass ratio of about 2:8 to 5:5 (see above), based on the current evidence of record the lithium sulfide, the metal, and the carbon component would necessarily and inherently “serve as migration paths for lithium ions and electrons” as evidenced by the instant specification (instant specification: Pg. 2: ln 27 - Pg. 3: ln 11; Pg. 8: lns 1-4, 15-20; Pg. 14: lns 21-22). Since the all-solid-state battery rendered obvious by modified Zhamu has the structure necessary to react with lithium ions as recited in the intended use limitation, the intended use limitation is met.
Regarding Claim 3, modified Zhamu renders obvious all of the limitations as set forth above. Although Zhamu does not specifically disclose the shape of the carbon component (NGPs), a carbon particle which is not “spherical” is interpreted broadly and reasonably as having a “linear” shape. Therefore, the carbon component of the prior art is interpreted as having either a spherical shape or a linear shape.
Zhamu discloses that the carbon component (NGP) is pre-fabricated using a process previously described [0115]. In a previously described process, Zhamu discloses that the carbon component (NGPs) can be formed with a thickness of smaller than 100 nm [0068]. Zhamu also discloses that a smaller particle size can potentially reduce strain energy in a particle [0016].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have formed the NGPs to have a thickness (i.e. diameter) smaller than 100 nm with a reasonable expectation that such a thickness would result in a successful NGP (carbon component) capable of use in an anode protective layer.
Although Zhamu does not specifically teach that the carbon component comprises spherical particles having a particle size D50 of about 10 nm to 100 nm, or linear particles having a cross-sectional diameter of about 10 nm to 300 nm, the range disclosed in the prior art encompasses/overlaps the range disclosed in the instant application. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have selected any portion of the range disclosed in the prior art, including forming the carbon component to have a diameter of 10 nm to 100 nm, with a reasonable expectation that such a diameter would result in a successful carbon component for use in an anode protective layer (MPEP 2144.05, I). This range corresponds to the D50 required for the spherical particle, and falls within the range disclosed for a linear particle.
Regarding Claim 4, modified Zhamu renders obvious all of the limitations as set forth above. Zhamu discloses that the carbon component is comprised of nano graphene platelets (NGPs) [0057]. Zhamu discloses that the NGPs are selected because they exhibit comparable properties to carbon nanotubes (CNTs), and are therefore “cost-effective substitutes for CNTs” [0067]. Zhamu further discloses that CNTs are an effective reinforcement additive for a protective matrix material [0159].
Therefore, although Zhamu does not teach a specific embodiment wherein the carbon component comprises carbon nanotubes, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used CNTs instead of/in addition to the NGPs disclosed by Zhamu (MPEP 2144.06, I-II) with a reasonable expectation that using a carbon component comprising CNTs would result in a successful protective layer.
Regarding Claim 5, modified Zhamu renders obvious all of the limitations as set forth above. Zhamu further discloses that the particle size of the nanocomposite most preferably has a dimension of less than 2 µm [0070, 099]. In a specific embodiment (Example 3), a nanocomposite with a diameter less than 1 µm were obtained [0130].
The range disclosed in the prior art encompasses the range disclosed in the instant application. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have selected any portion of the range disclosed in the prior art, including a particle diameter of about 10 nm to 1 µm, with a reasonable expectation that forming the composite to have such a particle diameter would result in a successful anode protective layer (MPEP 2144.05, I).
Regarding Claim 8, modified Zhamu renders obvious all of the limitations as set forth above. Zhamu further discloses that the metal component (electrode active material) preferably has a diameter smaller than 0.5 µm (i.e. 500 nm) [0078, 0102].
The range rendered obvious in the prior art encompasses the range disclosed in the instant application. Therefore, although Zhamu does not specifically teach that the metal component has a D50 of about 30 nm to 500 nm, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected to the metal component to have a particle size D50 of about 30 nm to 500 nm with a reasonable expectation that such a particle size would result in a successful metal component for use in an anode protective layer (MPEP 2144.05, I).
Regarding Claim 9, modified Zhamu renders obvious all of the limitations as set forth above, including that the matrix comprises a composite of metal sulfide and carbon component, and that a metal component is distributed in the matrix (see rejection of Claim 1, above).
Zhamu discloses that a minimum amount of carbon-reinforced matrix is necessary to cushion volume expansion-induced stresses and strains to obtain long cycle life [0085]. Zhamu also discloses that the metal component (electrode active material) dictates the lithium storage capacity [0108], and that it is desirable to have a high proportion of metal component (electrode active material) [0085]. Zhamu discloses that a preferred nanocomposite composition includes 10% to 80% of the metal component (electrode active material) [0085], thereby indicating that the carbon-reinforced matrix (i.e. composite of metal sulfide and carbon component) has a content of 90% to 20%.
Although Zhamu does not teach that the protective layer comprises an amount of about 50 % to 80 % by weight of the matrix and an amount of about 20 % to 50 % by weight of the metal component, in seeking to strike a balance between lithium storage capacity and protection against volume change-induced stresses, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to have optimized the content of carbon-reinforced matrix and metal component, including using 50 wt% to 80 wt% of matrix and 20 wt% to 50 wt% of metal component (MPEP 2144.05, II). One of ordinary skill in the art would have had a reasonable expectation that providing the anode protective layer with such a content of matrix and metal component would result in a successful protective layer for an all-solid-state battery.
Modified Zhamu renders obvious that the protective layer is applied to an anode current collector (see rejection of Claim 1, above). Zhamu does not teach the thickness of the protective layer.
Kim teaches an all-solid battery secondary battery including a solid electrolyte [0071-0072, 0079]. The solid electrolyte (930, Fig. 10) is positioned between an anode layer (920, Fig. 10) and a cathode layer (910, Fig. 10) [0124]. The anode layer comprises a first anode active material layer (922, Fig. 10) and a second anode active material layer (923, Fig. 10) which are disposed on an anode current collector (921, Fig. 10). Kim teaches that the second anode active material layer (923) can be a composite of a carbon material and a second metal [0130, 0133]. The second anode active material layer (923) is formed directly on the current collector (921; see Fig. 10). The second anode active material layer taught by Kim corresponds to the protective layer of modified Zhamu.
Kim teaches that the second anode active material can have a thickness of about 1 µm to about 50 µm [0141]. When the second anode active material layer is too thin it can collapse, thereby making it difficult to improve the cycle characteristics of the all-solid-state battery [0141]. By providing the second anode active material layer to have a thickness within the disclosed range, the short-circuit of the all-solid secondary battery is suppressed, and the cycle characteristics are improved [0141].
Both Kim and modified Zhamu are directed towards all-solid-state secondary batteries comprising an anode active material layer including a carbon composite. Therefore, in seeking to suppress a short-circuit and improve cycle characteristics, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the thickness of the protective layer of modified Zhamu, including selecting the thickness of the protective layer to be 1 µm to 20 µm as required by Claim 9, with a reasonable expectation that such a protective layer thickness would result in a successful all-solid-state battery (MPEP 2144.05, I).
Response to Arguments
Applicant's arguments filed 09/22/2025 have been fully considered but they are not persuasive. As an initial matter, Examiner notes that Applicant has remarked that the prior office action (mailed 06/23/2025) “maps elements of claim 1 primarily to Zhamu et al. and then relies on Horie, optionally with Kim, to assert that it would have been obvious to use the types of metal sulfides recited in the dependent claims” (Remarks, Pg. 7). Examiner respectfully disagrees and submits that the claims are primarily mapped to Zhamu in view of Kim, and relies on Horie to render obvious the identity of the metal sulfide. In other words, Kim is not an optional teaching reference in either the previous rejections of record or the current rejections of record (above).
Furthermore, Examiner notes that Applicant has remarked that the metal sulfides rendered obvious by the prior art are “TixSy, VSx, FexSy, SnSx, WSx, SbxSy, and SexSy” (Remarks, Pg. 7). Examiner respectfully disagrees and submits that the sulfides rendered obvious by the prior art as relied upon in the rejections of record are sulfides of Ti, Fe, Mo, or W (see rejection of Claim 1, above and Final Office action mailed 06/23/2025 at Pg. 12). In other words, Horie is not relied upon to teach sulfides of V, Sn, Sb, or Se. However, Horie is relied upon to teach sulfides of Mo (in addition to the sulfides of Ti, Fe and W noted by the Applicant).
First, Applicant has argued that the cited references pursue different objectives that would have discouraged the proposed modification (Remarks, Pg. 7). Applicant notes that Zhamu seeks a mechanically protective and chemically stable matrix, and submits that the negative-electrode-active sulfides taught by Horie would introduce repeated conversion/expansion events in a structure selected by Zhamu for mechanical protection (Remarks, Pg. 7).
Examiner has carefully considered this argument, but does not find it persuasive. Although Examiner acknowledges that Zhamu desires a matrix material which exhibits strength, resistance to crack formation, is inert to electrolyte, and does not provide significant defect sites that irreversibly trap lithium ions [0020], currently there is no evidence on record to suggest that the metal sulfide material of Horie would not function in the matrix of Zhamu. Examiner notes that Zhamu specifically discloses a “metal sulfide” as a possible identity of the matrix material (Claim 6; [0072]), and there is nothing in the disclosure of Zhamu that teaches away from using sulfides of Ti, Fe, Mo, or W. Furthermore, Pol evidences that metal sulfides of Ti, Fe, Mo, and W are known metal sulfides for use in similar carbon composite materials [Pol: 0007, 0058-0059]. Zhamu also discloses that the matrix can be supported by a “less-active or non-active matrix” [0018], which appears to imply that some amount of reactivity in the matrix material is acceptable. Currently, there is nothing on record to suggest that the metal sulfides rendered obvious by Horie would be too reactive to function in the matrix of Zhamu.
Second, Applicant has argued that the rejection’s inherency theory “lacks the required inevitability” (Remarks, Pg. 7). Applicant submits that Horie’s list includes materials that behave in fundamentally different ways in lithium systems (Remarks, Pg. 7). As an example, Applicant notes that sulfides of Sn and Sb are classic materials which form alloys with lithium (Remarks, Pg. 7), and that other materials may proceed via conversion, or mixed conversion/alloying behavior depending on composition and morphology (Remarks, Pg. 8) Applicant submits that the Office has not shown that the combination of Zhamu with any selected member of Horie’s heterogeneous list would necessarily and inevitably yield the claimed protective-layer structure, much less the same electrochemical behavior at the anode interface (Remarks, Pg. 8).
Examiner has carefully considered this argument, but does not find it persuasive. Examiner notes that Horie is not relied upon to teach the incorporation of any metal sulfide, but (as laid out in the rejection of Claim 1), is relied upon to teach sulfides of Ti, Fe, Mo, and/or W. In other words, rejections of record do not propose that sulfides of Sn and Sb inherently react in a particular matter (note that that sulfides of these metals are not relied upon as initially discussed, above). Instead, the rejections of record lay out a case that, when metal sulfides of Ti, Fe, Mo, and/or W (i.e. Ti2S3, TiS2, TiS, Fe3S4, FeS2, FeS, Mo2S3, MoS2, WS2) are incorporated into the composite of modified Zhamu, these metal sulfides would inherently react with lithium ions in the same manner as disclosed in the instant application (see rejection of Claim 1, above). Examiner notes that these metal sulfides are within the list of possible metal sulfides recited in Claim 1. "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (see MPEP 2112.01, I). Currently, there is no evidence on record to suggest that sulfides of Ti, Fe, Mo, and/or W, as rendered obvious by modified Zhamu, would not react in the same manner as disclosed in the instant specification.
Third, Applicant has argued that the rejection does not identify where the cited references disclose or suggest the particular morphology recited in Claim 1 with regards to the metal sulfide being uniformly distributed on the surface of the carbon component, or the composite proportion of “about 2:8 to 5:5” (Remarks, Pg. 8). Applicant submits that Zhamu’s discussion of optimizing contents provides no teaching of the uniform surface distribution or of the particular mass-ratio balance required by Claim 1, nor does it supply a reasoned rationale, supported by the references, which would have led a skilled person to the claimed structure through routine experimentation (Remarks, Pg. 8).
Examiner has carefully considered this argument, but respectfully does not find it persuasive. Examiner notes that the limitation regarding the metal sulfide being uniformly distributed on the surface of the carbon component is addressed in Claim 1 in regards the inherent structure formed by ball-milling the metal sulfide and the carbon component together (see rejection of Claim 1, above). Specifically, Zhamu discloses that the carbon component (NGPs) and the metal sulfide (matrix material) can be ground together by ball milling [0116, 0118, 0135], and the instant specification evidences that the process of ball milling inherently result in a composite, wherein the metal sulfide is uniformly distributed onto the surface of the carbon component (instant specification: Pg. 7: lns 19-20, 23-25).
In regards to the composite proportion of “about 2:8 to 5:5”, the rejection of Claim 1 discusses the protective effect provided by the NGP-reinforced matrix material and the lithium storage capacity provided by the electrode active material, with citations to the prior art (see rejection of Claim 1 at Pgs. 9-10, above; [Zhamu: 0018, 0020, 0069-0070, 0085, 0099, 0108]), and notes that in seeking to strike a balance between these effects, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have optimized the relative amounts of matrix material (metal sulfide), NGPs (carbon component) and electrode active material (metal component) (MPEP 2144.05, II), including selecting the metal sulfide and carbon component to have a mass ratio of about 2:8 to 5:5. Applicant has not pointed out a specific error in this reasoning, and thus the rejection is maintained. If Applicant is asserting that the claimed mass-ratio window provides unexpected results, Examiner notes that Claim 1 is not yet commensurate in scope with the showing of evidence (i.e. Examples 1-4; see MPEP 716.05(d)), and therefore this argument is not commensurate with the scope of the claims.
Fourth, Applicant has argued that the burden is on the Office to show that the carbon component serves as an electron conductive pathway within the protective layer (Remarks, Pg. 8). Applicant argues that the Office Action does not point to any teaching specifically in Zhamu that its NGPs are arranged and proportioned so as to establish an electron pathway across the protective layer in the manner required by Claim 1, let alone a composite where a metal sulfide is uniformly disposed on the surface of these carbon bodies (Remarks, Pg. 8).
Examiner has carefully considered this argument, but respectfully does not find it persuasive. As previously discussed, Zhamu discloses that the carbon material (NGPs) and the metal sulfide (matrix material) can be ground together by ball milling [0116, 0118, 0135], and the instant specification evidences that the process of ball milling inherently result in a composite, wherein the metal sulfide is uniformly distributed onto the surface of the carbon component (instant specification: Pg. 7: lns 19-20, 23-25; Pg. 11: lns 25-29; Pg. 13: lns 1-2). The instant specification does not indicate that further action is taken to orient the carbon material is a particular manner in order to facilitate migration paths for lithium ions and electrons.
Additionally, Examiner notes that there is currently nothing on record to suggest that nano graphene platelets (NGPs) cannot function as an electron transport pathway. Indeed, the instant specification appears to allow for a broad interpretation of the claimed “carbon component” (instant specification: Pg. 2: ln 27 – Pg. 3: ln 2). Therefore, the NGPs disclosed by Zhamu are broadly and reasonably interpreted as reading on an the recited “carbon component”.
The instant specification also indicates that the protective layer can provide a sufficient migration paths for lithium ions and electrons when the proportion of the metal sulfide to the carbon component is at a mass ratio of 2:8 to 5:5 (instant specification: Pg. 8: lns 15-20; Pg. 14: lns 21-22). Since modified Zhamu renders obvious a composite wherein a carbon component and a metal sulfide are mechanically milled together, and since modified Zhamu renders obvious that the composite comprises the metal sulfide to the carbon component at a mass ratio of 2:8 to 5:5 (see rejection of Claim 1, above), the structure of the protective layer is understood to be substantially similar to that of the instant application, and it is understood that the lithium sulfide, the metal, and the carbon component in the protective layer serve as migration paths for lithium ions and electrons (MPEP 2112.01, I-II). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (see MPEP 2112.01, I).
If Applicant is arguing that Claim 1 requires the carbon component to provide a particular “migration path” for lithium ions and electrons within the protective layer (e.g. across the protective layer), Examiner notes that Claim 1 currently does not require a particular amount of carbon within the protective layer. Specifically, although Claim 1 recites a matrix comprising a composite comprising a carbon component, wherein the ratio of metal sulfide to carbon component is set (i.e. “2:8 to 5:5”), Claim 1 currently does not specify what portion of the protective layer consists of the carbon component. In other words, Claim 1 is open to a protective layer which comprises only a very small amount (e.g. 0.001 wt%) of carbon component, so long as the required ratio of metal sulfide to carbon component is met. As such, any argument directed towards the carbon component providing a particular migration path for lithium ions and electrons within the protective layer does not appear to be commensurate with the scope of the claim.
Fifth Applicant has argued that there is no legally sufficient motivation to insert Horie’s negative-electrode-active sulfides into Zhamu’s protective matrix (Remarks, Pg. 9). Applicant asserts that Zhamu pegs its protective matrix material to a different role and therefore a skilled artisan would not take a highly reactive anode material from Horie and put it into Zhamu’s protective interlayer (Remarks, Pg. 9).
Examiner has carefully considered this argument, but does not find it persuasive. As previously discussed, Zhamu discloses a metal sulfide, but is silent as to the identity of the metal sulfide (Claim 6; [0072]). Zhamu also notes that matrix materials can be “less active or non-active material” [0018], thereby indicating that some degree of reactivity is acceptable in the matrix material. Horie teaches various metal sulfides which can be successfully used in an anode active material [Horie: 0116], and Pol evidences that metal sulfides of Ti, Fe, Mo, and W are known metal sulfides for use in similar carbon composite materials [Pol: 0007, 0058-0059]. Currently, the evidence of record does not suggest that the metal sulfide materials of Horie would not function in the matrix material of Zhamu. For instance, the current evidence of record does not indicate that the metal sulfide materials taught by Horie undergo a large volume expansion, or otherwise compromise the mechanical integrity of an electrode active material.
In regards to Applicant argument that the cited combination of references do not teach the structure of the protective layer of Claim 1 (Remarks, Pg. 9), Examiner submits that, as discussed in detail above, the protective layer of the prior art renders obvious the architecture, constituents, their relative amounts, and its location (see rejection of Claim 1, above).
In regards to Applicant’s argument that the inherency position collapses because the cited references neither disclose nor suggest converting a metal-sulfide protective matrix material into lithium sulfide and metal during charging of the battery, and Zhamu affirmatively presents its sulfide as part of a protective matrix material rather than as a negative electrode material (Remarks, Pgs. 9-10), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Although modified Zhamu does not disclose converting a metal sulfide material to lithium sulfide and a metal during charging, modified Zhamu possesses a protective layer with a structure which is capable of undergoing such a transformation, should the intended use (i.e. charging and discharging) of the battery be performed. Thus, the limitation is met.
Conclusion
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/D.C.N./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 10/31/2025