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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/02/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/02/2026 has been entered.
Response to Amendment
The amendment filed on 01/09/2026 has been entered. Claims 1, 7 are amended, Claims 6 and 9 are canceled and Claims 1-5, 7, 10 and 12-20 are pending.
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.
Claim 19 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 19 is dependent on canceled claim 9 and thus is incomplete. Further, Claim 19 also allows for silicon in the active material wherein claim 1 requires the active material to consist only of graphite and/or hard carbon. This inconsistency requires clarification.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 allows for silicon in the active material, wherein claim 1 requires the active material to consist only of graphite and/or hard carbon. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 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 considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claims 1-5, 7, 10-12, 17-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20210399308 A1), hereinafter “Kim” in view of Mcevoy et al. (A Commercial Conducting Polymer as Both Binder and Conductive Additive for Silicon Nanoparticle-Based Lithium-Ion Battery Negative Electrodes, ACS Nano, Vol 10, Pages 3702−3713, 2016), hereinafter “Mcevoy”. Kim and Mcevoy et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely secondary battery electrode materials.
In regard to Claims 1-5, 7 and 20, Kim et al. discloses a secondary battery used in an electric apparatus, comprising a negative electrode plate, wherein the negative electrode plate comprises: a negative electrode current collector; a first negative electrode film layer disposed on at least one surface of the negative electrode current collector and a second negative electrode film layer disposed on a surface of the first negative electrode film layer (Kim, Abstract, [0003]).
Kim et al. also discloses that the first negative electrode film layer comprises a first negative electrode active material with a median particle size by volume Dv50 of less than or equal to 10µm (Kim, [0056]), which overlaps the claimed range, and a first conductive material combined with a polymer binder. Kim et al. also discloses a specific example wherein graphite is the first active material and that a mass percentage of the first conductive material combined with a first polymer binder in the first negative electrode film layer is recorded as A, and A is equivalent to 0.8% conductive agent + 3.6% binder = 4.4%, thus, A≤6% (Kim, Example TL1-6, Table 3 (First Layer)).
Further, Kim et al. discloses the second negative electrode film layer comprises a second negative electrode active material with a median particle size by volume Dv50 of less than or equal to 20µm, including less than or equal to 8µm (Kim, [0056]), which overlaps the claimed range, and a second conductive material combined with a polymer binder. Kim et al. also discloses a specific example wherein the second active material is graphite and a mass percentage of the second conductive material combined with a polymer binder in the second negative electrode film layer is recorded as B, where B is equivalent to 0.8% conductive material and 2.2% binder = 3% and wherein the negative electrode plate satisfies A>B (Kim, Example TL1-6, Table 3 (Second Layer)).
In addition, Kim et al. discloses the polymer binder may be included in a range of 1.5 to 4 wt% in the first layer and 1% to 3.5% in the second layer (Kim, [0042]) and the conductive additive was provided at 0.8 in an example but may be included in a range of 1.3 wt% or less (Kim, [0048]) and this can be used to calculate a range of A and B wherein A is conductive additive + polymer binder in the first layer and B is conductive additive + polymer binder in the second layer. Using the range of binder of the first layer of 1.5 to 4 wt% and conductive additive range of 0.8 to 1.3% A is within a range of 2.3 to 5.3 and using the range of binder of the first layer of 1% to 3.5% and conductive additive range of 0.8 to 1.3% B is within a range of 1.8 and 8.5, thus A/B is in a range of 0.479 < A/B <2.944 which overlaps the claimed ranges of 2 ≤ A/B ≤ 10, 1% ≤ A ≤ 5%, 1% ≤ A ≤ 3%, B ≤ 4%, 0.5% ≤ B ≤ 3% and A/B ≤ 5.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
While Kim et al. is silent as to the use of a conductive polymer in the first and second electrode film layer, it instead discloses the layers comprising active material, conductive additive and a polymer binder. However, the skilled artisan would be well aware of alternative selections achieving the same result with a reasonable expectation of success, such as a conductive polymer in place of the conductive additive and polymer binder combination as evidenced by Mcevoy et al.
Mcevoy et al. discloses that the common combination of a conductive agent + a polymer binder (usually carbon black and an inert polymer binder) are beneficially replaced with a single conductive binder, in this case, one embodiment provides a PEDOT:PSS as the conductive polymer (Mcevoy, Abstract), but Mcevoy also discloses the use of polyaniline as a conductive polymer choice (Mcevoy, pg. 3703). Mcevoy teaches this substitution of materials achieves the benefit of eliminating the well-known occurrence of capacity losses due to physical separation of the active material and traditional inorganic conductive additives during repeated lithiation/delithiation processes (Mcevoy, Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a conductive polymer such as polyaniline as taught in Mcevoy in place of the conductive material + polymer binder in the first and second electrode film layers disclosed in Kim et al. as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Mcevoy and as doing so would be nothing more than a simple substitution of one known element for another to obtain predictable results.
In regard to Claim 10 and 12, Kim in view of Mcevoy et al. discloses the secondary battery according to claim 1. Kim et al. also discloses that the first negative electrode film layer comprises a first negative electrode active material with a median particle size by volume Dv50 of less than or equal to 10µm (Kim, [0056]) and a second negative electrode active material with a median particle size by volume Dv50 of less than or equal to 20µm, including less than or equal to 8µm (Kim, [0056]), which overlaps the clamed range. Further, the skilled artisan would be well aware of the properties of the materials selected including the particle size and selecting particle size wherein the median particle size by volume D,50 of the first negative electrode active material is greater than the median particle size by volume Dv50 of the second negative electrode active material would be obvious to try for the skilled artisan and would amount to nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
In regard to Claims 17-18, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. Kim et al. also discloses wherein a thickness of the first negative electrode film layer is in a range of H1= 100 µm or less, a thickness of the second negative electrode film layer is in a range of H2=150µm or less, (Kim, [0036-0037]) which overlaps the claimed range and gives H1/H2 as 0.6 and the secondary battery thus satisfies 0.5 ≤ H1/H2 ≤ 3. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the current invention to have selected the overlapping portion of the ranges disclosed by the reference, as overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20210399308 A1), hereinafter “Kim” in view of Mcevoy et al. (A Commercial Conducting Polymer as Both Binder and Conductive Additive for Silicon Nanoparticle-Based Lithium-Ion Battery Negative Electrodes, ACS Nano, Vol 10, Pages 3702−3713, 2016), hereinafter “Mcevoy” as applied to claim 1 above and further in view of Baek et al. (US 20220223843 A1), hereinafter “Baek”. Kim, Mcevoy, and Baek et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely secondary battery electrode materials.
In regard to Claims 13-14, Kim in view of Mcevoy et al. discloses the secondary battery according to claim 1. Kim et al. is silent to the specific surface area of the first or second negative electrode active material, however, Baek et al. discloses an electrode for a lithium secondary battery and a lithium secondary battery including the same, the electrode including: a current collector; and an electrode material layer containing an active material and a binder that is formed on at least one surface of the current collector, wherein, when the electrode material layer is divided in half based on the thickness, the upper layer located away from the current collector and corresponding to the thickness of ½ is referred to as an electrode material layer A, and the lower layer located close to the current collector and corresponding to the thickness of ½ is referred to as an electrode material layer B, each of the electrode material layer A and the electrode material layer B contains one or more active material layer and a specific surface area (SSA) of the first negative electrode active material is less than a specific surface area (SSA) of the second negative electrode active material and that Baek et al. discloses a specific surface area of the first negative electrode active material is 1.4 to 3.6 m2/g which overlaps the claimed range of 0.5 m2/g to 2 m2/g (Baek, Abstract, [0041]), which overlaps the claimed range.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide an active material in the first layer with a specific surface area (SSA) less than the SSA of the active material in the second layer as opposed to providing the opposite configuration as doing so would be nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20210399308 A1), hereinafter “Kim” in view of Mcevoy et al. (A Commercial Conducting Polymer as Both Binder and Conductive Additive for Silicon Nanoparticle-Based Lithium-Ion Battery Negative Electrodes, ACS Nano, Vol 10, Pages 3702−3713, 2016), hereinafter “Mcevoy” as applied to claim 1 above and further in view of Song et al. (CN 111628141 B – Machine Translation referenced for citation), hereinafter “Song”. Kim, Mcevoy and Song et al. are analogous prior art to the claimed invention because they pertain to the same field of endeavor, namely secondary battery electrode materials.
In regard to Claim 15-16, Kim in view of Mcevoy et al. discloses the secondary battery according to claim 1. Kim is silent as to the OI value of the material however the skilled artisan would be well aware of the OI value as evidenced by Song et al.
Song et al. discloses an OI value of the first negative electrode active material is greater than an OI value of the second negative electrode active material with OI of the first active material being 5.8 and the OI value of the second active material being 3.5 (Song, Example 1) and Song et al. discloses an OI value of the first negative electrode active material being 5.8 and an OI value of the second negative electrode active material being 3.5 which falls within the claimed range of the OI value of the first negative electrode active material is 4 to 20; and/or the OI value of the second negative electrode active material is 0.5 to 10 (Song, Example 1) with the benefit of that configuration taught as effectively enhancing the diffusion capability of the lithium ion, and improving the charging performance of the negative electrode while improving the compacting density of the negative electrode sheet, so as to improve the energy density of the battery (Song, Paragraph [19]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide an active material in the first layer with an OI value greater than an OI value of the second negative electrode active material rather than the opposite configuration as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Song and as doing so would be nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of copending Application No. 17/547271 in view of Mcevoy et al ((A Commercial Conducting Polymer as Both Binder and Conductive Additive for Silicon Nanoparticle-Based Lithium-Ion Battery Negative Electrodes, ACS Nano, Vol 10, Pages 3702-3713) (Year: 2016).
In regard to Claim 1, it requires a secondary battery, comprising a negative electrode plate, wherein the negative electrode plate comprises: a negative electrode current collector; a first negative electrode film layer disposed on at least one surface of the negative electrode current collector, wherein the first negative electrode film layer comprises a first negative electrode active material and a first conductive polymer, a mass percentage of the first conductive polymer in the first negative electrode film layer is recorded as A, and A<6%; and a second negative electrode film layer disposed on a surface of the first negative electrode film layer, wherein the second negative electrode film layer comprises a second negative electrode active material and a second conductive polymer, and a mass percentage of the second conductive polymer in the second negative electrode film layer is recorded as B; wherein the negative electrode plate satisfies A>B.
Claim 1 of the copending application discloses a secondary battery comprising a negative electrode plate, wherein the negative electrode plate comprises a negative electrode current collector and a negative electrode film, and the negative electrode film comprises a first negative electrode film and a second negative electrode film; the first negative electrode film is disposed on at least one surface of the negative electrode current collector and comprises a first negative electrode active material; the second negative electrode film is disposed on the first negative electrode film and comprises a second negative electrode active material. Further, the specification of the copending application discloses the use of a conductive agent + polymer binder in a mass % where A =1.8%+0.8% = 2.6% thus A<6% (Paragraph [0127]) and where B is = 1.8%+0.8% = 2.6% and even though A=B in the specific example, there is no significance disclosed in the specification and it is within the realm of routine optimization that the conductive polymer would be a different value A>B in a different layer at the discretion of the skilled artisan.
In addition, claim 1 of the copending application is silent to the use of a conductive polymer in the first and second electrode film layer and instead the specification uses an active material with a conductive agent + a polymer binder (Paragraph [0076]. This however, is nothing more than a routine selection of material, and would be at the discretion of the skilled artisan. For example, the combination of a conductive agent and polymer binder with the negative electrode active material in the first and second electrode film layers could reasonably be a conductive polymer instead of the combination of conductive agent and polymer binder, as evidenced by Mcevoy et al. Mcevoy et al. discloses that the common combination of a conductive agent + a polymer binder (usually carbon black and an inert polymer binder) are replaced with a single conductive binder, in this case, the conducting polymer PEDOT:PSS. Mcevoy teaches this substitution of materials achieves the benefit of eliminating the well-known occurrence of capacity losses due to physical separation of the active material and traditional inorganic conductive additives during repeated lithiation/delithiation processes (Mcevoy, Abstract). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide a conductive polymer as taught in Mcevoy in place of the conductive material + polymer binder in the first and second electrode film layers disclosed in the copending application as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Mcevoy and as doing so would be nothing more than a simple substitution of one known element for another to obtain predictable results.
In regard to Claim 10, it requires the secondary battery according to claim 1, wherein a median particle size by volume D,50 of the first negative electrode active material is greater than a median particle size by volume Dv50 of the second negative electrode active material. Claim 3 of the copending application discloses the secondary battery according to claim 1, wherein a volume average particle size DV50 of the first negative electrode active material is larger than a volume average particle size DV50 of the second negative electrode active material.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the current invention to provide the secondary battery according to Claim 1 and 10 in view of Claim 1 an 3 of the copending application and further in view of Mcevoy et al. as doing so would be at the discretion of the skilled artisan based upon the commonly available materials and would be nothing more than a variation of the material for use in the same field based on design incentives or other market forces as the variations are predictable to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 01/09/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Lastly, the provisional non statutory double patenting rejection of record has not been overcome and no terminal disclaimer has been filed, therefore the rejection is maintained.
Conclusion
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/K.M.O./Examiner, Art Unit 1725
/JONATHAN CREPEAU/Primary Examiner, Art Unit 1725
