Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This Office Action is in response to the communication filed on 8/25/26. Applicant’s arguments have been considered but are not found persuasive. Claims 21-22, 24, 26-28, 30-33, 35, 37-39 and 41-46 are pending. Claims 41-42 and 45-46 are withdrawn from consideration. This Action is FINAL, as necessitated by amendment.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 8/17/26 and 8/17/26 have been considered by the examiner.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. V. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/874,502, fails to
provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or
pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claim 21 recites a free-standing electrode film “containing no water or inert organic medium”, that is not adequately supported or enabled by the prior filed application. See also claim 32 that recites “containing no water or inert organic medium”. See also pages 4-5 of the Final Rejection of 1/29/26.
Election/Restrictions
Claims 41-42, 45 and 46 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-22, 24, 26-28, 30-33, 35, 37-39 and 43-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Each of independent claims 21 and 32 recite “containing no water or inert organic medium”, which is not supported by the specification as filed. Negative claim limitations must find support in the specification as filed. Only [0028] of the present specification mentions water, wherein water is described for purposes of demonstrating a boiling point. Examiner notes water is a solvent that has a boiling point of less than 130°C. The term “inert organic medium” is not found in the present specification.
Claims 21-22, 24, 26-28, 30-33, 35, 37-39 and 43-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Each of independent claims 21 and 32 recite “a lithium transition metal-based electrode active material”, which is not supported by the specification as filed. The specification does not disclose the electrode active material may broadly be any “lithium transition metal-based electrode active material”. At [0027] of the present specification, the electrode active material is described as being a metal oxide, such as manganese oxide or lithium manganese oxide. Examiner suggests claims 21 and 32 be amended to replace “lithium transition metal-based” with “metal oxide”, “”manganese oxide” or “lithium manganese oxide”, as supported by the present specification.
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 21-22, 24, 26-28, 30-33, 35, 37-39 and 43-44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Each of independent claims 21 and 32 recite “containing no water or inert organic medium”, which is indefinite. The term “inert organic medium” is not defined by the claim and the present specification does not recite and/or define the term “inert organic medium”. It is unclear what an electrode film containing no water or inert organic medium encompasses. In addition, it is unclear if the “one or more chemicals” recited by each of claims 21 and 32 may be considered “inert organic medium”. It is unclear if the “one or more chemicals” are present in the produced electrode film of claim 21 and claim 32 or if the “one or more chemicals” are only used in the production of the electrode film but are not contained in the produced electrode film. Examiner notes [0030]- [0033] of the present specification teach the film was heated at a temperature of 150°C, which would have removed solvent having a boiling point of less than 130°C. See also [0026] of the present specification.
Regarding claim 30, water is a solvent that has a boiling point of less than 130°C. It is unclear if a solvent, such as water, is encompassed by claim 30.
Claim 31 recites the limitation "one or more chemicals" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 31 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 31 recites a solvent may be one or more chemicals previously recited by claim 21. 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.
To the extent the claims are understood in view of the 35 USC 112 rejections above, note the following prior art rejections.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 21-22, 24, 26-28, 30-33, 35, 37-39 and 43-44 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gan et al., US 2002/0094479 A1.
Gan teaches a preferred positive electrode active admixture comprises from about 80% to 99%, by weight, of a cathode active material comprising either one or both of the SVO (silver vanadium oxide) and CSVO materials for a primary cell or lithium cobalt oxide (lithium transition metal-based material) for a secondary cell mixed with a suitable binder (0 to 3%, by weight), a conductor diluent (0 to 3%, by weight) and at least one of the above phosphate compounds. The resulting blended active mixture may be formed into a free-standing sheet prior to being contacted with a current collector to form the subject electrode [0028]. The conductive additive may be acetylene black, carbon black and/or graphite. Metallic materials such as nickel, aluminum, titanium and stainless steel in powder form are also useful as conductive diluents when mixed with the above listed active materials. The positive electrode of both a primary and a secondary cell further comprises a binder material which is preferably a fluoro-resin powder such as powdered polytetrafluoroethylene (PTFE) or powdered polyvinylidene fluoride (PVDF). More specifically, a preferred cathode active material for a primary cell comprises SVO in any one of its many phases, or mixtures thereof, and/or CSVO mixed with a binder material and a conductive diluent. A preferred cathode active material for a secondary cell comprises lithium cobalt oxide mixed with a binder material and a conductive diluent [0024].
Gan teaches an electrochemical cell having a negative electrode of lithium or of an anode material which is capable of intercalating and de-intercalating lithium coupled with a positive electrode of a cathode active material. The resulting electrode couple is activated by a non-aqueous electrolyte. The electrolyte flows into and throughout the electrodes (abstract). The electrolyte preferably comprises an alkali metal salt dissolved in a mixture of aprotic organic solvents comprising a low viscosity solvent including organic esters, ethers, dialkyl carbonates, and mixtures thereof. Low viscosity solvents include tetrahydrofuran (THF), diisopropylether, methyl acetate (MA), diglyme, triglyme, tetraglyme, 1,2-dimethoxyethane (DME), 1,2-diethoxyethane (DEE), 1-ethoxy,2-methoxyethane (EME), dimethyl carbonate (DMC), diethyl carbonate (DEC), dipropyl carbonate (DPC), ethylmethyl carbonate (EMC), methylpropyl carbonate (MPC), ethylpropyl carbonate (EPC), and mixtures thereof. DMC and
Regarding claims 43 and 44, Gan teaches the positive electrode active material may comprise lithium manganese oxide [0021]. Thus, the claims are anticipated.
*
Claim(s) 21-22, 24, 26-28, 30-33, 35, 37-39 and 43-44 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shin et al., 2020/0313193 A1.
Shin teaches a free-standing cathode electrode film comprising a dry active material and a dry binder. The binder may be an elastic polymer with an insubstantial amount of PTFE. The active material may be lithium manganese oxide [0049; 0057]. The active material may comprise 70-99 weight % of the cathode electrode film. The cathode electrode film can comprise up to about 10 weight %, for example 1-3 weight % of conductive additive. The cathode electrode film comprises up to about 5 weight %, for example about 1.5 weight % to about 3 weight %, of the binder [0058]. The electrode comprises a current collector and the dry cathode electrode [0012; 0048;0051].
Shin teaches a “solvent-free” electrode film is an electrode film that contains no detectable, or substantially no, processing solvents, nor processing solvent residues and/or processing solvent impurities. Such a “solvent-free” electrode film is distinguished from conventional electrode films based upon conventional solvent-based processes, which contain detectable, or a substantial amount, of processing solvents, processing solvent residues, and/or processing solvents impurities, even after the solvent-based film has undergone a drying process. A dry electrode film, such as a cathode electrode film or an anode electrode film, may be solvent-free [0031]. The solvent can include one or more functional groups selected from carbonates, ethers and/or esters. In some embodiments, the solvent can comprise a carbonate where the carbonate can be selected from acyclic carbonates such as, for example, dimethyl carbonate (DMC), diethyl carbonate (DEC), ethyl methyl carbonate (EMC), and combinations thereof [0063].
Thus, the claims are anticipated. Note Shin teaches, for example, a film with an insubstantial amount or at most an insubstantial amount of PTFE may comprise less than 0.5 wt. % PTFE, which includes a film absent of PTFE [0033].
Response to Arguments
Applicant's arguments filed 8/25/26 have been fully considered. The claims are newly rejected under 35 USC 112, 1st and 2nd. See above. Claims 41-42 and 45-46 remain withdrawn. See the Final Rejection of 1/29/26.
Applicant argues the claim recitation “a lithium transition metal-based electrode active material” finds support at [0027] of the present specification. Examiner disagrees. See rejection of at least claims 21 and 32 above.
Examiner notes [0030]- [0033] of the present specification teach the film was heated at a temperature of 150°C, which would have removed solvent having a boiling point of less than 130°C. See also [0026] of the present specification.
Applicant argues Gan fails to disclose the combination of features recited in claim 21 as amended, namely, "[a] free-standing electrode film containing no water or inert organic medium," with the free-standing electrode film comprising "one or more chemicals selected from the group consisting of acetate ester, alcohol, glycol, ethanol, methanol, isopropanol, acetone, diethyl carbonate, and dimethyl carbonate." However, these limitation have been rejected under 35 USC 112 as indefinite. See the indefinite rejections of at least claims 21 and 32 above. It is unclear how the claims encompass both “no inert organic medium” and at least one of the recited “chemicals”. It is unclear what no inert organic medium encompasses. Furthermore, at least claim 30 requires a solvent that has a boiling point of less than 130°C (encompasses water).
Applicant argues Gan's method of forming a film is described with reference to an earlier patent (see paragraph [0028] of Gan). However, this argument is not commensurate in scope with the claimed invention as the claims are not directed toward a method. Applicant further argues the claimed invention recites "one or more chemicals selected from the group consisting of acetate ester, alcohol, glycol, ethanol, methanol, isopropanol, acetone, diethyl carbonate, and dimethyl carbonate." In this respect as well, Applicant's claimed film differs from the material described in Gan/Takeuchi. Examiner disagrees and the argument is not properly supported. Examiner notes [0030]- [0033] of the present specification teach the film was heated at a temperature of 150°C, which would have removed solvent having a boiling point of less than 130°C. See also [0026] of the present specification. Furthermore, the pending claims have been rejected as indefinite The pending claims have been rejected in view of the cited prior art to the extent they are understood in view of the 35 USC 112 rejections..
Applicant states it should be appreciated that the claimed chemical(s) are present despite the film "containing no water or inert organic medium." Thus, assuming, arguendo that a person having ordinary skill in the art would understand Gan/Takeuchi's drying process to effectively remove all of the water or inert organic medium, such person would never have understood the same film to somehow contain the claimed chemical(s). It is unclear how Applicant concludes the claimed “chemicals” are necessarily distinguished from “inert organic medium”. See the 35 USC 112 rejections above.
Applicant argues Shin likewise fails to disclose the combination of features recited in claim 21 as amended, namely, "[a] free-standing electrode film containing no water or inert organic medium," with the free-standing electrode film comprising "one or more chemicals selected from the group consisting of acetate ester, alcohol, glycol, ethanol, methanol, isopropanol, acetone, diethyl carbonate, and dimethyl carbonate." Again, It is unclear how Applicant concludes the claimed “chemicals” are necessarily distinguished from “inert organic medium”. See the 35 USC 112 rejections above.
Applicant further argues unlike the solvent/paste method used by Gan and Takeuchi, Shin's method of forming an electrode film uses no or substantially no solvents. See paragraphs [0031] and [0051] of Shin. As such, a person having ordinary skill in the art would not understand Shin's electrode film to include the claimed "one or more chemicals" while also containing "no water or inert organic medium" as claimed. This argument is clearly not found persuasive. The argument is not commensurate in scope with the claimed invention as the claims do not recite a method. Applicant has not addressed the teachings of Shin. Shin teaches a free-standing cathode electrode film comprising a dry active material and a dry binder. The binder may be an elastic polymer with an insubstantial amount of PTFE. The active material may be lithium manganese oxide [0049; 0057]. The active material may comprise 70-99 weight % of the cathode electrode film. The cathode electrode film can comprise up to about 10 weight %, for example 1-3 weight % of conductive additive. The cathode electrode film comprises up to about 5 weight %, for example about 1.5 weight % to about 3 weight %, of the binder [0058]. The electrode comprises a current collector and the dry cathode electrode [0012; 0048;0051]. Regarding claims 30-31, Shin teaches a “solvent-free” electrode film is an electrode film that contains no detectable, or substantially no, processing solvents, nor processing solvent residues and/or processing solvent impurities. Such a “solvent-free” electrode film is distinguished from conventional electrode films based upon conventional solvent-based processes, which contain detectable, or a substantial amount, of processing solvents, processing solvent residues, and/or processing solvents impurities, even after the solvent-based film has undergone a drying process. A dry electrode film, such as a cathode electrode film or an anode electrode film, may be solvent-free [0031]. The solvent can include one or more functional groups selected from carbonates, ethers and/or esters. In some embodiments, the solvent can comprise a carbonate where the carbonate can be selected from acyclic carbonates such as, for example, dimethyl carbonate (DMC), diethyl carbonate (DEC), ethyl methyl carbonate (EMC), and combinations thereof [0063]. Thus, the claims are anticipated. Note Shin teaches, for example, a film with an insubstantial amount or at most an insubstantial amount of PTFE may comprise less than 0.5 wt. % PTFE, which includes a film absent of PTFE [0033].
Applicant notes that the solvents listed in paragraph [0063] of Shin are examples of an electrolyte solvent (see paragraph [0062]), not chemicals that are included in an electrode film as claimed. It is unclear what Applicant is intending to argue and/or the distinction Applicant is attempting to make between the claimed invention and Shin. Examiner notes [0030]- [0033] of the present specification teach the film was heated at a temperature of 150°C, which would have removed solvent having a boiling point of less than 130°C. See also [0026] of the present specification.
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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/TRACY M DOVE/ Primary Examiner, Art Unit 1725
