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 07/11/2025, 10/02/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-7, 9, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (CN 111628141 B - Machine Translation), hereinafter “Song” 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”. Song 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 Claim 1, Song et al. discloses 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 and a second negative electrode film layer disposed on a surface of the first negative electrode film layer (Song, Abstract, Paragraph [8]). Song 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 1-10µm (Song, [18]), which overlaps the claimed range, and a first conductive material combined with a polymer binder. Song et al. also discloses 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 1% conductive agent + 1% binder = 2%, thus, A≤6% (Song, Example 1 (First Layer)). Further, Song 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 1-10µm (Song, [18]), which overlaps the claimed range, and a second conductive material combined with a polymer binder. Song et al. also discloses 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 0.5% conductive material and 1% binder = 1.5% and wherein the negative electrode plate satisfies A>B (Song, Example 1 (Second Layer)). 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.
However, Song et al. fails to explicitly disclose the use of an active material with a conductive polymer in the first and second electrode film layer and instead uses an active material with a conductive agent + a polymer binder. 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 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 Song 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 2, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. Song et al. also discloses the mass % of the combination of the conductive material + polymer binder in the first layer in a mass percentage A, where A is 1% conductive agent + 1% binder = 2%, which falls within the claimed range of 1%≤A≤5% (Song, Example 1). As shown in Claim 1 above, the skilled artisan would have a reasonable expectation of success when selecting a conductive polymer instead of a conductive material + polymer binder as taught in Mcevoy. Further, there would be no disclosed reason for the skilled artisan to alter the mass % of each when providing a conductive polymer as a substitution for the conductive material + polymer binder contained in the overall electrode film layer as Mcevoy achieved their positive experimental results and the benefits taught therein using the same mass % of conductive polymer in the electrode film layer versus the mass % of the conductive agent + polymer binder in the electrode film layer (Mcevoy, Pages 3704-3705). 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 taught in Mcevoy to the negative electrode film layers disclosed in Song et al. at the same mass % as the conductive material + polymer binder as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Mcevoy and would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 3, Song in view of Mcevoy et al. discloses the secondary battery according to claim 2. Song et al. also discloses the mass % of the combination of the conductive material + polymer binder in the first layer in a mass percentage A, where A is 1% conductive agent + 1% binder = 2%, which falls within the claimed range of 1%≤A≤3% (Song, Example 1). As shown in Claim 1 above, the skilled artisan would have a reasonable expectation of success when selecting a conductive polymer instead of a conductive material + polymer binder as taught in Mcevoy. Further, there would be no disclosed reason for the skilled artisan to alter the mass % of each when providing a conductive polymer as a substitution for the conductive material + polymer binder contained in the overall electrode film layer as Mcevoy achieved their positive experimental results and the benefits taught therein using the same mass % of conductive polymer in the electrode film layer versus the mass % of the conductive agent + polymer binder in the electrode film layer (Mcevoy, Pages 3704-3705). 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 substitution as taught in Mcevoy to the negative electrode film layers disclosed in Song et al. at the same mass % as the conductive material + polymer binder, as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Mcevoy and would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 4, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. Song et al. also discloses the combination of the conductive material + polymer binder in the second layer in a mass percentage B, where B is 0.5% conductive material and 1% binder = 1.5% which falls within the claimed range of B≤4% (Song, Example 1). As shown in Claim 1 above, the skilled artisan would have a reasonable expectation of success when selecting a conductive polymer instead of a conductive material + polymer binder as taught in Mcevoy. Further, there would be no disclosed reason for the skilled artisan to alter the mass % of each when providing a conductive polymer as a substitution for the conductive material + polymer binder contained in the overall electrode film layer as Mcevoy achieved their positive experimental results and the benefits taught therein using the same mass % of conductive polymer in the electrode film layer versus the mass % of the conductive agent + polymer binder in the electrode film layer (Mcevoy, Pages 3704-3705). 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 taught in Mcevoy to the negative electrode film layers disclosed in Song et al. at the same mass % as the conductive material + polymer binder as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Mcevoy and would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 5, Song in view of Mcevoy et al. discloses the secondary battery according to claim 4. Song et al. also discloses the combination of the conductive material + polymer binder in the second layer in a mass percentage B, where B is 0.5% conductive material and 1% binder = 1.5% which falls within the claimed range of 0.5%≤B≤3% (Song, Example 1). As shown in Claim 1 above, the skilled artisan would have a reasonable expectation of success when selecting a conductive polymer instead of a conductive material + polymer binder as taught in Mcevoy. Further, there would be no disclosed reason for the skilled artisan to alter the mass % of each when providing a conductive polymer as a substitution for the conductive material + polymer binder contained in the overall electrode film layer as Mcevoy achieved their positive experimental results and the benefits taught therein using the same mass % of conductive polymer in the electrode film layer versus the mass % of the conductive agent + polymer binder in the electrode film layer (Mcevoy, Pages 3704-3705). 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 taught in Mcevoy to the negative electrode film layers disclosed in Song et al. at the same mass % as the conductive material + polymer binder as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Mcevoy and would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 6, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. Song et al. also discloses the combination of the conductive material + polymer binder in the first layer in a mass percentage A, where A is 1% conductive agent + 1% binder = 2% and the combination of the conductive material + polymer binder in the second layer in a mass percentage B, where B is 0.5% conductive material and 1% binder = 1.5%, where A/B = 1.3 which falls within the claimed range of A/B≤10. (Song, Example 1). As shown in Claim 1 above, the skilled artisan would have a reasonable expectation of success when selecting a conductive polymer instead of a conductive material + polymer binder as taught in Mcevoy. Further, there would be no disclosed reason for the skilled artisan to alter the mass % of each when providing a conductive polymer as a substitution for the conductive material + polymer binder contained in the overall electrode film layer as Mcevoy achieved their positive experimental results and the benefits taught therein using the same mass % of conductive polymer in the electrode film layer versus the mass % of the conductive agent + polymer binder in the electrode film layer (Mcevoy, Pages 3704-3705). 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 taught in Mcevoy to the negative electrode film layers disclosed in Song et al. at the same mass % as the conductive material + polymer binder as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Mcevoy and would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 7, Song in view of Mcevoy et al. discloses the secondary battery according to claim 6. Song et al. also discloses the combination of the conductive material + polymer binder in the first layer in a mass percentage A, where A is 1% conductive agent + 1% binder = 2% and the combination of the conductive material + polymer binder in the second layer in a mass percentage B, where B is 0.5% conductive material and 1% binder = 1.5%, where A/B = 1.3 which falls within the claimed range of A/B≤5. (Song, Example 1). As shown in Claim 1 above, the skilled artisan would have a reasonable expectation of success when selecting a conductive polymer instead of a conductive material + polymer binder as taught in Mcevoy. Further, there would be no disclosed reason for the skilled artisan to alter the mass % of each when providing a conductive polymer as a substitution for the conductive material + polymer binder contained in the overall electrode film layer as Mcevoy achieved their positive experimental results and the benefits taught therein using the same mass % of conductive polymer in the electrode film layer versus the mass % of the conductive agent + polymer binder in the electrode film layer (Mcevoy, Pages 3704-3705). 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 taught in Mcevoy to the negative electrode film layers disclosed in Song et al. at the same mass % as the conductive material + polymer binder as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Mcevoy and would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 9, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. Song et al. discloses the first negative electrode active material and the second negative electrode active material both comprise artificial graphite (Song, Example 1). Thus, the skilled artisan would find it obvious to provide artificial graphite as the negative electrode active material in both the first and second negative electrode film layers as doing so would be nothing more than a variation of 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.
In regard to Claim 15, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. 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) 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.
In regard to Claim 16, Song in view of Mcevoy et al. discloses the secondary battery according to claim 15. 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). 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 negative electrode active material in the first layer with an OI value in the range disclosed in Song as doing so would be at the discretion of the skilled artisan based upon the commonly available active 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.
In regard to Claim 17, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. Song et al. also discloses wherein a thickness of the first negative electrode film layer is recorded as H1=90µm, a thickness of the second negative electrode film layer is recorded as H2=90µm, and the secondary battery satisfies 0.5<H1/H2=1<3 which falls within the claimed range (Song, Example 1). 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 negative electrode film layers in the thickness disclosed in Song as doing so would be at the discretion of the skilled artisan and would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
In regard to Claim 18, Song in view of Mcevoy et al. discloses the secondary battery according to claim 17. Song et al. also discloses wherein a thickness of the first negative electrode film layer is recorded as H1 in a range of 20-180 μm, a thickness of the second negative electrode film layer is recorded in a range of H2=20-180 μm which significantly overlaps the claimed range of 20µm≤H1≤110µm and/or 20µm≤H2≤110µm (Song, Paragraph [16]). 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.
In regard to Claim 19, Song in view of Mcevoy et al. discloses the negative electrode plate according to claim 9. Song et al. also discloses the first negative electrode active material and/or the second negative electrode active material further comprises a silicon-based material while achieving a benefit of improving the energy density of the electric core using a larger amount of the silicon material and graphite as the negative electrode active material (Song, Paragraphs [4-5]). 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 that further comprises silicon as doing so would give the skilled artisan the reasonable expectation of achieving the benefit taught in Song 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 20, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. Song et al. also discloses electronic products such as mobile phones and notebook computers as potential electric apparatuses for use with the secondary battery disclosed. 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 secondary battery as disclosed in Song to an electric apparatus as doing so would be nothing more than applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (CN 111628141 B - Machine Translation), hereinafter “Song” 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 Kim et al. (US 20210399308 A1), hereinafter “Kim”. Song, Mcevoy, and Kim 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 10, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. While Song et al. is silent to the variation in median particle size by volume D50 of the first and second negative electrode active materials, Kim et al. discloses a first negative electrode film layer comprising a first active material with a first conductive material + polymer binder coated on a current collector and a second negative electrode film layer comprising a second active material with a second conductive material + polymer binder coated on the first layer (Kim, Abstract), wherein a median particle size by volume D50 of the first negative electrode active material is greater than a median particle size by volume Dv50 of the second negative electrode active material (Kim, Paragraph [0057], 21st embodiment) with a configuration that achieves the benefit of DCIR in a Li-ion battery cell including the electrode being decreased while adhesion at interfaces between the current collector and the coating layers being maintained or improved (Kim, Paragraph [10]). 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 active material in the first layer with a larger D50 than the active material in the second layer as opposed to the opposite configuration as doing so would give the skilled artisan the reasonable expectation of achieving the benefits taught in Kim, and as doing so would be nothing more than choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
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.
In regard to Claim 12, Song in view of Mcevoy and further in view of Kim et al. discloses the secondary battery according to claim 11. Song et al. discloses a D50 of the first active material can range from 10-20µm which overlaps the claimed range of the first active material D50 of 8-12µm (Song, Paragraph [23]). 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.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (CN 111628141 B - Machine Translation), hereinafter “Song” 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”. Song, 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 Claim 13, Song in view of Mcevoy et al. discloses the secondary battery according to claim 1. Song et al. is silent to the specific surface area of the first or second negative electrode active material, however, Baek et al. discloses 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 (Baek, Paragraph [0041]). 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.
In regard to Claim 14, Song in view of Mcevoy and further in view of Baek et al. discloses the secondary battery according to claim 13. Song et al. is silent to the specific surface area of the first or second negative electrode active material, however, 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, Paragraph [0041]). 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 negative electrode active material in the first layer with an SSA in the range disclosed in Baek as doing so would be at the discretion of the skilled artisan based upon the commonly available active 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.
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 09/19/2025 have been fully considered but they are not persuasive. The limitations amended from dependent claims 8 and 11 to be included in independent claim 1 have been rejected under the same art of record (see 35 USC 103 rejection above), wherein the Dv50 particle size of the first and second active materials and at least one of the conductive polymers from the amended list of preferred conductive polymers are disclosed in Song et al. (CN 111628141 B - Machine Translation), 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).
In regard to Claim 1, while Mcevoy et al. discloses an embodiment with a PEDOT:PSS, Mcevoy does not limit the conductive polymer and in fact, also discloses polyaniline as a conductive polymer choice (Mcevoy, pg. 3703), which is a conductive polymer from the list of amended claim 1.
Further, while Song et al. discloses the median particle size of the graphite active material is 10-20µm in one embodiment, Song et al. also discloses the active material is not limited and in fact, discloses a first and second silicon active material wherein the median particle size is 1-10µm (Song, [18]), which overlaps the claimed ranges.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/K.M.O./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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