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 .
Response to Amendment
The amendment filed on 15 April 2026 has been entered. Claims 1, 4, 8 ,and 9 are amended, claims 12-15 are added, and claims 8-11 remain withdrawn from consideration. Claims 1-7 and 12-15 are examined herein.
The objections to the specification ware withdrawn due to Applicant’s amendment.
The rejection of claim 4 under 35 USC 112(b) as indefinite is withdrawn due to Applicant’s amendment.
All previous rejections base on the Nogami et al. reference are withdrawn due to Applicant’s amendment.
The previous provisional obviousness-type double patenting rejections over conflicting copending application 18/121857 are withdrawn, and rejections based on a new rationale are provided.
Claim Rejections - 35 USC § 103
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, 3-6, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2021/0119203 A1) in view of Nishinaka et al. (WO 2014/103558 A1)
Regarding claim 1, Kim et al. teaches an all solid-state battery (Fig. 1) comprising an anode (20) including at least an anode current collector (21), a cathode (10) and a solid electrolyte layer (30) arranged between the anode and the cathode (Para. [0057]); wherein a protective layer (22 or combination of 22 and 23) containing Mg is arranged between the anode current collector and the solid electrolyte layer (Figure 1; Para. [0078]-[0080]); wherein the protective layer includes a mixture including a Mg-containing particle (Para. [0078]-[0080] and an ionic conducting agent [0084]); and wherein the Mg-containing particle does not comprise oxygen atoms. (The metal Mg-containing particles taught in Para. [0078]-[0080] are not taught as containing oxygen)
Kim et al. does not explicitly teach the suggested “ionic conducting agent” as being an electrolyte.
Nishinaka et al. is cited as teaching an example of an ion conducting agent known in the art of Li-ion batteries that is an organic or inorganic solid electrolyte. (Translation p. 4, 6th full paragraph)
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the anode active material layer 22 of Kim et al. by selecting an organic or inorganic solid electrolyte as the ionic conductive agent suggested by Kim for use in the layer, since such electrolytes are recognized in the art as ionic conductive agents, as demonstrated by Nishinaka et al. This would have involved only substitution of one known element for another, where the result of the combination would have been predictable. Accordingly, such substitution is held to have been obvious to one having ordinary skill in the art. (MPEP 2143(I)(B))
Regarding claim 3, modified Kim et al. teaches a sulfide solid electrolyte for solid electrolyte layer 30 (Para [0098] and [0100]), while the ionic conducting agent was taught as being an organic or inorganic solid electrolyte (Nishinaka et al. translation p. 4, 6th full paragraph). As evidenced by the disclosure of Kim et al., sulfide solid electrolytes (Para. [0100]) are conventional inorganic solid electrolytes in the field of Li ion batteries, and selection of a sulfide solid electrolyte as the ionic conducting agent is considered to have been obvious to one having ordinary skill in the art at the time the invention was made, in the absence of evidence of unexpected results.
Regarding claim 4, Kim et al. teaches that layer 23 can be a metal thin film containing Mg (Para. [0069]-[0070]) and is closer to anode current collector 21 than mixture layer 22. (Fig. 1)
Regarding claim 5, Kim et al. further teaches that the anode further includes a deposited layer 24 of Li formed by charging (Fig. 3 and Para [0088]), which corresponds to the claimed anode active material. Layer 24 is between anode current collector 21 and the solid electrolyte layer 30. (Fig. 3)
Regarding clam 6, Kim et al. teaches that layer 24 can be formed either before or after assembly of the battery. (Para. [0090]) In the case that the electrodes and battery are assembled prior to formation of layer 24, the battery of Kim et al. is understood not to include an anode active material containing a deposited Li between the anode current collector and the solid electrolyte layer.
Regarding claim 12, Kim et al. teaches that the solid electrolyte layer can consist of only solid electrolyte. (Para. [0128])
Regarding claim 13, layers 22 and 23 of Kim et al. in combination can reasonably correspond to the claimed protective layer. Within such an interpretation, the protective layer is in direct contact with both solid electrolyte layer 30 and anode current collector 21. (Fig. 1)
Regarding claim 14, Kim et al. teaches an all solid-state battery (Fig. 1) comprising an anode (20) including at least an anode current collector (21), a cathode (10) and a solid electrolyte layer (30) arranged between the anode and the cathode (Para. [0057]); wherein a protective layer (22 or combination of 22 and 23) containing Mg is arranged between the anode current collector and the solid electrolyte layer (Figure 1; Para. [0078]-[0080]); wherein the protective layer includes a mixture including a Mg-containing particle (Para. [0078]-[0080] and an ionic conducting agent [0084]); and wherein the solid electrolyte layer consists of solid electrolyte. (Para. [0128])
Kim et al. does not explicitly teach the suggested “ionic conducting agent” as being an electrolyte.
Nishinaka et al. is cited as teaching an example of an ion conducting agent known in the art of Li-ion batteries that is an organic or inorganic solid electrolyte. (Translation p. 4, 6th full paragraph)
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the anode active material layer 22 of Kim et al. by selecting an organic or inorganic solid electrolyte as the ionic conductive agent suggested by Kim for use in the layer, since such electrolytes are recognized in the art as ionic conductive agents, as demonstrated by Nishinaka et al. This would have involved only substitution of one known element for another, where the result of the combination would have been predictable. Accordingly, such substitution is held to have been obvious to one having ordinary skill in the art. (MPEP 2143(I)(B))
Regarding claim 15, layers 22 and 23 of Kim et al. in combination can reasonably correspond to the claimed protective layer. Within such an interpretation, the protective layer is in direct contact with both solid electrolyte layer 30 and anode current collector 21. (Fig. 1)
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. and Nishinaka et al. as applied to claims 1, 3-6, and 12-15 above, and further in view of Hasegawa et al. (US 2020/0251717 A1)
Modified Kim et al. teaches an all solid state battery as described above in addressing claims 1, 3-6, and 13-15 above. In addition, Kim et al teaches that the Mg particles within layer 22 can be about 8 wt.% to about 60 wt.% of the active material particles. (Para 0080]
Modified Kim et al. does not explicitly teach the percentage of Mg-containing particle with respect to the total of the Mg-containing particle and the solid electrolyte.
Hasegawa et al. is relied upon to teach conventional proportions of anode components within Li ion batteries of this type, specifically that the proportion of anode active material within the anode layer can be between 20-90 wt. % (Para. 0027) and that the proportion of solid electrolyte within the anode layer can be 1-60 wt.%. (Para 0038)
It would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify modified Kim et al. by forming the anode layer 22 to have 20-90 wt. % active material and 1-60 wt.% solid electrolyte, as taught by Hasegawa et al., because Hasegawa shows these to be suitable amounts of the respective components of an anode. Such combination would only have predictably resulted in a functional battery anode. The respective ranges would correspond to a range of 2.6 wt. % - 98 wt.% as the proportion of Mg-containing particle with respect to a total of the Mg-containing particle and the solid electrolyte. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. and Nishinaka et al. as applied to claims 1, 3-6, and 12-15 above, and further in view of Haga et al (US 2019/0280328).
Modified Kim et al. teaches an all solid state battery as described above in addressing claims 1, 3-6, and 13-15 above.
Modified Kim et al. does not explicitly teach a filling rate of the anode layer.
Haga et al. teaches a solid state battery manufacturing method that advantageously results in an anode layer filling rate of 80% or more and reduces the incidence of slippage of the anode layer and the solid electrolyte from the anode foil. (Para. [0012]-[0013])
It would have been obvious to one having ordinary skill in the art at the time the invention was made to further modify modified Kim et al. by forming the battery using the techniques of Haga et al that provide an anode filling rate of 80% or more, because Haga et al. teaches that this will result in inhibition of slippage of the electrolyte and anode layer from an anode foil. (Para. [0013])
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, 4, 5, and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 7, and 8 of copending Application No. 18/121,857 (reference application) in view of Kim et al. (US 2021/0119203)
This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 1 of ‘857 does not explicitly require the Mg-containing particle not to comprise oxygen atoms.
However, Kim et al. teaches a similar solid-state battery comprising an anode 20 having a layer 22 that has a protective function (e.g. Para. [0062]) provided by metallic particles of e.g. Mg. (Para [0078]-[0080])
It would have been obvious to one having ordinary skill in the art to select metallic Mg particles for the protective layer in ‘857, in order to obtain the protective function demonstrated by Kim et al.
Claim 3 of ‘857 recites the all solid state battery of claim 1, wherein the Mg layer is a metal thin film containing the Mg. When taking into account the limitation in claim 1 of ‘857 that the Mg layer is in a position between the mixture layer and the anode current collector, this corresponds to the limitations of instant claim 4.
Both claim 5 of the instant application and claim 7 of ‘857 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.
Both claim 6 of the instant application and claim 8 of ‘857 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.
Response to Arguments
Applicant’s arguments with respect to the previous prior art rejections 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.
Regarding the provisional obviousness-type double patenting rejections, the examiner agrees that ‘857 does not include a limitation that the Mg-containing particle does not comprise oxygen atoms. However, selection of such particles is considered to have been obvious in view of the teachings of Kim et al.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Barton, whose telephone number is (571) 272-1307. The examiner can normally be reached on M-F 9:30 AM – 6:00 PM.
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/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 7 August 2026
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