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 .
Summary
Claims 1-11 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on October 29, 2025 is acknowledged.
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 29, 2025.
Specification
The disclosure is objected to because of the following informalities:
“sold electrolyte” should be “solid electrolyte” (p10, paragraph 1, line 1)
“those described in “A. All solid state batter” (p30, [0076])
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.
Claim 4 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 4 recites “the protective layer includes a Mg layer that is a metal thin film containing the Mg.” It is unclear if the Mg layer of claim 4 corresponds to the mixture layer of claim 1, which is recited as included in the protective layer. Additionally, the limitation of claim 4 recites that the metal thin film contains “the Mg,” which can be interpreted to mean that all of the Mg in the protective layer is within the Mg layer, which could conflict with an interpretation of the mixture layer also containing “the Mg” as currently written in claim 1. A recommendation would be to modify the phrase to state “further includes a Mg layer” and to eliminate the word “the” in front of “the Mg.”
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Nogami et al (WO 2020184340 A1 with the equivalent English translation provided by US 2022/0158249 A1).
Regarding claim 1, Nogami teaches (Fig. 1, reproduced below) an all solid state battery ([0001]) comprising an anode (20) including at least an anode current collector (21), a cathode (10), and a solid electrolyte (13) arranged between the anode and the cathode ([0025]-[0026]); wherein
A protective layer containing Mg is arranged between the anode current collector (21) and the solid electrolyte layer (13); and the protective layer includes a mixture layer (23) including a Mg-containing particle containing the Mg, and a solid electrolyte
(Nogami describes a method of producing a solid electrolyte layer by coating a solution of a solid electrolyte dissolved in a solvent and fine particles in the solid electrolyte solution and then removing the solvent from the solution to deposit the solid electrolyte layer on at least one of the positive electrode layer and the negative electrode layer, wherein the fine particles can be magnesia (MgO) ([0025]-[0026]; [0012]-[0014]). The resulting solid electrolyte layer on the negative electrode (23) corresponds to the claimed protective layer, because Nogami teaches that the layer provides an even solid electrolyte layer ([0010]), which would be expected to reduce risks of internal short circuits caused by pinholes generated due to unevenness, as also disclosed by Nogami ([0008])); the layer 23 includes the fine particles as MgO, which would correspond to Mg-containing particles, and solid electrolyte deposited from the coating solution of solid electrolyte and fine particles).
Fig. 1 of Nogami:
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Regarding claim 3, Nogami teaches the battery of claim 1, and Nogami also teaches wherein the solid electrolyte can be a sulfide solid electrolyte ([0044]-[0046]]); therefore the solid electrolyte can be a sulfide solid electrolyte for both layers 13 (corresponding to the claimed solid electrolyte layer) and layer 23 (corresponding to the claimed protective layer), given that both layers are deposited according to the method and materials described in ([0012]-[0014], [0044]-[0046]).
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 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nogami et al (WO 2020184340 A1 with the equivalent English translation provided by US 2022/0158249 A1).
Regarding claim 2, Nogami teaches the all solid state battery of claim 1, and Nogami further teaches the concentration of fine particles (which can be Mg-containing particle MgO) can be 0.1 wt% to 30 wt% in the coating solution, which can be composed of the fine particles, the solid electrolyte, and solvent ([0012]-[0014]), with the benefit of reducing unevenness after coating and satisfactory coating properties ([0055]). Therefore, the mass concentration of MgO is a result-effective variable, and a skilled artisan would have been motivated to utilize routine experimentation to modify the concentration of MgO in the composition to optimize the evenness and coating properties of the mixture layer 23, and would have arrived at the claimed range of the proportion of the Mg-containing particle (MgO) with respect to the dried mixture layer containing the Mg-containing particle (MgO) and the solid electrolyte.
Regarding claim 6, Nogami teaches the battery of claim 1. Although not shown in the embodiment of Fig. 1, Nogami further teaches it is possible to employ a configuration in which a metal foil or alloy foil is used for the negative electrode layer ([0029]). Accordingly, in a newly manufactured battery, the anode does not include an anode active material layer containing a deposited Li between the anode current collector and the solid electrolyte layer. A skilled artisan would have considered the manufacture of a configuration with a metal or alloy foil for the negative electrode layer to be a suitable option, given that Nogami directly suggests the option.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Nogami et al (WO 2020184340 A1 with the equivalent English translation provided by US 2022/0158249 A1) as applied to claim 1 above, and further in view of Locke et al (GB 2585678 A).
Regarding claim 4, Nogami teaches the battery of claim 1 but Nogami does not teach wherein the protective layer includes a Mg layer that is a metal thin film containing the Mg, in a position closer to the anode current collector side than the mixture layer.
In the same field of endeavor, Locke teaches a protection layer for a battery comprising of a first layer that can comprise a metal that alloys with an alkali metal and is formed on the current collector, and a second layer deposited on it wherein the second layer is an ionically conducting layer (corresponding to the mixture layer of Nogami’s battery) ([0008]), wherein examples of base lithium alloys that may be included in alloy layer include LinMgx wherein n may be between 0.1 and 20 and x may be between 0.5 and 5 ([0017]). Locke discloses that maintaining a relatively small thickness for the layer may reduce and eliminate the tendency to crack, which may be beneficial in terms of the lifetime of the cell ([0012]). Therefore, Locke teaches the lithium alloy layer is a metal thin film containing Mg. Locke further teaches that the protection layer can reversibly store alkali metals such as lithium under the protection layer, and that following saturation of the alloying layer with alkali metal, further alkali metal may plate under the first layer of the protection layer during cycling of the cell, allowing homogeneous stripping during discharge of the alkali metal accumulated under the protection layer that can mitigate pitting and/or cracking of the alkali metal deposits or the formation of metal dendrites that may cause safety issues and the risk of short circuits, and may lower the energy density of the cell ([0013]).
A skilled artisan would have been motivated to modify the battery of Nogami to use the lithium alloy layer of Locke within the protection layer of Nogami given that Locke teaches it has the advantages of mitigating inhomogeneous stripping and plating of alkali metal (i.e. Li for a lithium battery) that can lower the energy density of the cell and also cause safety issues and the risk of short circuits. Also, Locke teaches that the lithium alloy layer would be located next to the current collector to provide its beneficial properties, that is, in order for the alkali metal to plate under it, and therefore a skilled artisan would have found it obvious to place it in a position closer to the anode current collector side than the mixture layer.
Regarding claim 5, Nogami teaches the battery of claim 1 but does not explicitly teach the anode containing a deposited Li between the anode current collector and the solid electrolyte layer. Locke teaches that lithium electrochemical cells may experience a layer of alkali metal (e.g. Li for a lithium cell) formed on the surface of the anode during cycling ([0004]), which would be present between the current collector and the solid electrolyte layer; therefore, Locke suggests the deposition of Li between the anode current collector and the solid electrolyte layer is an inherent phenomena associated with operation of cycled lithium batteries.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nogami et al (WO 2020184340 A1 with the equivalent English translation provided by US 2022/0158249 A1) as applied to claim 1 above, and further in view of Hoshi et al (WO 2021085238 A1).
Regarding claim 7, Nogami teaches the battery of claim 1. Nogami does not explicitly claim a filling rate of the mixture layer is 70% or more.
In the same field of endeavor, Hoshi teaches a similar solid electrolyte layer for a solid-state lithium battery ([0036]). Hoshi further discloses that from the viewpoint of enhancing lithium ion conductivity, the solid electrolyte layer has a porosity of for example, 20% or less ([0038]), therefore porosity is a result-effective variable. One of ordinary skill in the art would have recognized that increasing porosity of the layer corresponds to a decrease in filling rate of the layer. Given that Nogami teaches high ion conductivity is a preferable characteristic for solid state electrolytes ([0006]), such as the claimed mixture layer (23) of Nogami, one of ordinary skill in the art would have also been motivated to use routine experimentation to adjust the porosity of the mixture layer to optimize the lithium ion conductivity of the layer, as taught by Hoshi, and would have correspondingly arrived at the claimed filling rate of the mixture layer.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/121,857 (reference application).
This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows:
Claim 1 of copending Application No. 18/121,857 recites an all solid state battery comprising an anode including at least an anode current collector, a cathode, and a solid electrolyte layer arranged between the anode and the cathode; wherein a protective layer containing Mg is arranged between the anode current collector and the solid electrolyte layer; the protective layer includes a mixture layer including a Mg-containing particle containing the Mg, and a solid electrolyte, and in the protective layer, Mg concentration increases stepwisely or continuously from a first surface which is the solid electrolyte layer side towards a second surface which is the anode current collector side. The claim anticipates claim 1 of the instant application, which also recites an all solid state battery comprising an anode including at least an anode current collector, a cathode, and a solid electrolyte layer arranged between the anode and the cathode; wherein a protective layer containing Mg is arranged between the anode current collector and the solid electrolyte layer; the protective layer includes a mixture layer including a Mg-containing particle containing the Mg, and a solid electrolyte.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting over claim 3 of copending Application No. 18/121,857. This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows:
Claim 3 of copending Application No. 18/121,857 recites the all solid state battery of claim 2, wherein the Mg layer is a metal thin film containing the Mg, wherein claim 2 of the copending application recites the battery of its parent claim 1 and wherein the protective layer includes a Mg layer containing the Mg but not a solid electrolyte, in a position closer to the anode current collector side than the mixture layer side. Together, the limitations of the copending application read on the limitations of claim 4 within the instant application, which recite the all solid state battery of claim 1 wherein the protective layer includes a Mg layer that is a metal thin film containing the Mg, in a position closer to the anode current collector side than the mixture layer.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting over claim 7 of copending Application No. 18/121,857. This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows:
Both claim 5 of the instant application and claim 7 of the copending application recite the all solid state battery of claim 1 wherein the anode includes an anode active material layer containing a deposited Li between the anode current collector and the solid electrolyte layer, and claim 1 of the copending application anticipates claim 1 of the instant application; therefore, claim 7 of the copending application anticipates claim 5 of the instant application.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting over claim 8 of copending Application No. 18/121,857. This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows:
Both claim 6 of the instant application and claim 8 of the copending application recite the all solid state battery of claim 1 wherein the anode does not include an anode active material layer containing a deposited Li between the anode current collector and the solid electrolyte layer, and claim 1 of the copending application anticipates claim 1 of the instant application; therefore, claim 8 of the copending application anticipates claim 6 of the instant application.
Conclusion
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/G.L.L./Examiner, Art Unit 1726
/BACH T DINH/Primary Examiner, Art Unit 1726 01/21/2026