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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-15 are pending in the application. Claims 4 & 6-7 are withdrawn. Claims 1-3, 5, & 8-15 were rejected in the 12/3/2025 office action. Claims 1-3, 5, & 8-15 are presently examined.
Response to Amendment / Arguments
The amendment filed 3/3/2026, in response to the 12/3/2025 office action, has been entered. Applicant’s claim amendments overcame the 35 U.S.C. 112(b) rejection. Applicant's arguments, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive.
Claim 1 requires (A) a porous, elastic buffer layer with an electrically conductive material and (B) an intermediate layer with carbon and a metal capable of alloying with lithium. US20210336269A1 (Sugimoto) teaches an anode active material layer 202 which meets the requirement of both buffer layer and intermediate layer.
Regarding the buffer layer and the intermediate layer, in the 12/3/2025 office action, Examiner rejected claim 1 based on the following guidance from the MPEP:
MPEP 2144.04 V.C. Making Separable; and
MPEP 2144.04 VI.B. Duplication of Parts.
Applicant addressed the rejection based on MPEP 2144.04 V.C. Making Separable. Applicant did not, however, address the rejection based on MPEP 2144.04 VI.B. Duplication of Parts. The rejection is maintained due to Applicant’s failure to address the rejection based on MPEP 2144.04 VI.B. Duplication of Parts.
Regarding the rejection based on MPEP 2144.04 V.C. Making Separable, Applicant argues that the buffer layer and the intermediate layer have different functions, so it would not have been obvious to separate Sugimoto’s anode active material layer 202 into the claimed buffer layer and the intermediate layer. These different functions, however, are not claimed. Furthermore, claim 1 fails to require any difference between these two layers. Thus, a layer that fulfills the requirements of both layers can be divided to meet claim 1 requirements.
In order to overcome Sugimoto, Examiner encourages Applicant to amend claim 1 to require a difference between the buffer layer and the intermediate layer. This could be a material or a function in one layer that cannot be in the other layer. Of course, any such amendment must be supported by the specification.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
The claims are in bold font, the prior art is in parentheses.
Claims 1-3, 9-10, & 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over US20210336269A1 (Sugimoto).
Sugimoto teaches the following claim 1 limitations:
An all-solid-state battery (abstract), comprising:
an anode current collector (paragraph 46; figure 1: anode current collector 201);
a buffer layer (paragraph 46; figure 1: anode active material layer 202; further discussion below) disposed on the anode current collector (201), wherein the buffer layer is porous and has elasticity and the buffer layer comprises an electrically conductive material (paragraph 49: anode active material layer 202 comprises carbon nanotubes);
an intermediate layer (paragraph 46; figure 1: anode active material layer 202; further discussion below) disposed on the buffer layer and comprising a carbon material and a metal capable of alloying with lithium (paragraph 49: anode active material layer comprises amorphous carbon and silver);
a solid electrolyte layer (paragraph 39; figure 1: solid electrolyte layer 300) disposed on the intermediate layer (202);
a cathode active material layer disposed on the solid electrolyte layer (paragraph 39; figure 1: cathode active material layer 102); and
a cathode current collector (paragraph 39; figure 1: cathode current collector 101) disposed on the cathode active material layer (102)
Sugimoto’s anode active material layer 202 includes the required components of both the claimed buffer layer and intermediate layer. MPEP 2144.04 V.C. provides guidance for this issue:
C. Making Separable
In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that ‘if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.’).
Dividing Sugimoto’s anode active material layer 202 matches the required buffer layer and intermediate layer. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to divide Sugimoto’s anode active material layer 202, by calling it two layers, and thus achieve the claimed buffer layer and intermediate layer. As illustrated in Figure A below, half of Sugimoto’s anode active material layer 202 is interpreted as the buffer layer and half as the intermediate layer.
Figure A: Annotated Sugimoto Figure 1
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MPEP 2144.04 VI.B. provides an alternative argument: “mere duplication of parts has no patentable significance unless a new and unexpected result is produced”. Duplication of Sugimoto’s anode active material layer 202 matches the required buffer layer and intermediate layer. It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to duplicate Sugimoto’s anode active material layer 202 and thus achieve the claimed buffer layer and intermediate layer.
With regard to claims 2-3, Sugimoto teaches the limitations of claim 1 as noted above. Sugimoto also teaches the following limitations of claims 2-3:
Claim 2
the all-solid-state battery further comprises a deposited layer interposed between the buffer layer and the intermediate layer, and when the all-solid-state battery is charged, and the deposited layer comprises lithium
Claim 3
the buffer layer satisfies Relation 1 below:
[Relation 1] Tb>Td wherein Tb is a thickness of the buffer layer, and Td is a thickness of the deposited layer when state of charge (SOC) is 100
Sugimoto’s anode active material layer components, such as silver, would react with lithium, resulting in retention of lithium at full charge. Sugimoto’s anode active material layer 202 thus includes the composition of the deposited layer, the buffer layer, and the intermediate layer.
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, to divide Sugimoto’s anode active material layer 202, by calling it three layers (MPEP 2144.04 VI.C). Two such divisions achieve the claimed buffer layer, deposited layer, and intermediate layer:
Figure B: Annotated Sugimoto Figure 1
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The boundaries of the buffer layer, the deposited layer, and the intermediate layer in figure B are arbitrarily assigned because the composition is the same in each; therefore, these boundaries are assigned for Tb>Td, as illustrated in figure B above.
With regard to claims 9-10 & 14, Sugimoto teaches the limitations of claim 1 as described above. Claim 9-10 & 14 recite:
Claim 9
the buffer layer has a tensile strength of about 50 GPa or less
Claim 10
the buffer layer has a Young's modulus of about 1 TPa or less
Claim 14
the all-solid-state battery has a volume change of about 1% or less between state of charge (SOC) 100 and state of charge (SOC) 0
Sugimoto fails to explicitly teach tensile strength, Young's modulus, and volume change. Nevertheless, modified Sugimoto teaches the buffer layer of claim 1; therefore, Sugimoto’s buffer layer would presumably would have the tensile strength, Young's modulus, and volume change of claims 9-10 & 14. MPEP 2112(I) provides guidance for this issue:
“‘[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
The patent office does not have the ability to test, or to obtain data for, every possible property. Measurement of a property does not make an old substance patentable.
With regard to claims 11-12, Sugimoto teaches the limitations of claim 1 as noted above. Sugimoto also teaches the following limitations of claims 11-12:
Claim 11
the electrically conductive material comprises a fibrous carbon material (paragraph 49: anode active material layer 202 comprises carbon nanotubes), and the buffer layer comprises pores formed by a network in which the fibrous carbon material is interconnected in three dimensions (carbon nanotubes naturally arrange in a three dimension interconnected network with pores between adjacent carbon nanotubes)
Claim 12
the fibrous carbon material comprises carbon nanotubes (paragraph 49: anode active material layer 202 comprises carbon nanotubes)
With regard to claim 13, Sugimoto teaches the limitations of claim 1 as noted above. Sugimoto also teaches the following limitation of claim 13:
the metal capable of alloying with lithium comprises… silver (Ag) (paragraph 49: anode active material layer comprises silver)
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US20210336269A1 (Sugimoto), as applied to claim 1, and further in view of US20220336817A1 (Roev).
Sugimoto teaches the following claim 5 limitation:
a thickness of the buffer layer is about 12 µm to 30 µm (paragraph 13: anode active material layer thickness = 1 to 20 μm)
The boundaries of the buffer layer and the intermediate layer in figure A are arbitrarily assigned because the composition is the same in each. Half of Sugimoto’s anode active material layer thickness is assigned to the buffer layer and half is assigned to the intermediate layer (MPEP 2144.04 V.C.). Sugimoto’s buffer layer thickness range is thus 0.5 to 10 μm (1/2 of the 1 to 20 μm anode active material layer thickness). This 0.5 to 10 μm overlaps the claimed 12 µm to 30 µm range. MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”
Given that Sugimoto’s 0.5 to 10 μm range is similar to and substantially overlaps the claimed 12 µm to 30 µm range, and further given the fact that no criticality is disclosed for the claimed range, the range in claim 5 is an obvious variant of Sugimoto’s range.
Sugimoto, however, fails to teach the following claim 5 limitation, which is taught by Roev:
a capacity of the all-solid-state battery is about or greater than about 1 mAh/cm2 but less than about 3 mAh/cm2 (figure 5A: capacity 2 to 2.5 mAh/cm2)
Roev is directed to a battery with improved charge/discharge efficiency and lifespan characteristics (paragraph 4). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Sugimoto’s battery to have 2 to 2.5 mAh/cm2 capacity, as taught by Roev, for a battery with improved charge/discharge efficiency and lifespan characteristics.
Claims 8 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over US20210336269A1 (Sugimoto), as applied to claim 1, and further in view of US20210273220A1 (Yakovleva).
With regard to claim 8, Sugimoto teaches the limitations of claim 1 as described above. Sugimoto, however, fails to teach the following claim 8 limitation, which is taught by Yakovleva:
the buffer layer has a porosity of about 50% or greater (paragraphs 36 & 38: active material, with carbon nanotubes, has 25% to 60% porosity)
Yakovleva is directed to a battery with a porous anode active material for reduced electrode deterioration due to volume expansion (abstract). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Sugimoto’s buffer layer to have 25% to 60% porosity, as taught by Yakovleva, for a battery with reduced electrode deterioration due to volume expansion.
Yakovleva’s buffer layer porosity range of 25% to 60% overlaps the claimed range of ≥ 50%. MPEP 2144.05 (II)(A) provides the law for this issue:
“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)”
Given that Yakovleva’s range is similar to and substantially overlaps the claimed range, and further given the fact that no criticality is disclosed for the claimed range, the porosity range in claim 8 is an obvious variant of Yakovleva’s range.
With regard to claim 15, Sugimoto teaches the limitations of claim 1 as described above. Sugimoto, however, fails to teach the following claim 15 limitation, which is taught by Yakovleva:
A vehicle comprising an all-solid-state battery of claim 1. (paragraph 3: electric vehicle)
It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Sugimoto’s battery to be used in a vehicle, as taught by Yakovleva, in order to provide a practical use for Sugimoto’s battery.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684.
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/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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