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
Applicant’s arguments and claim amendments submitted February 27, 2026 have been entered into the file. Currently, claims 1, 3-5, 7-9, and 11-14 are amended and claims 1-16 are pending for examination.
Claim Interpretation
In claim 1, the theoretical volume gram capacity of sodium metal is interpreted as being a constant value of 1131 mAh/cm3, as recited in paragraph [32] of the instant specification (1166 mAh/g * 0.97 g/cm3 = 1131 mAh/cm3).
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 1-16 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 claims contain 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.
Claims 1-16 are directed to an electrochemical device comprising a positive electrode plate including a current collector and positive electrode active material and a negative electrode plate including a current collector and step coatings.
Per MPEP 2163 (II)(A)(3)(ii), the written description requirement for a claimed genus may be satisfied though sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant identifying characteristic, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
Regarding independent claim 1, the disclosure does not adequately reflect the structural diversity of the claimed genus (positive electrode active material). The instant disclosure only presents examples wherein the positive electrode material is Na4Fe3(PO)4P2O7, the gram capacity (Ca) is 120 mAh/g, and the weight of positive active material per unit area (ga) is 30 mg/cm2 (instant specification Table 1). However, the scope of instant claim 1 includes all positive active materials and is not limited to Na4Fe3(PO)4P2O7 and these specific values of Ca and ga. The Examples presented in Table 1 of the instant specification do not adequately represent the full scope of positive electrode active materials, wherein the scope of positive electrode active materials includes various compound classes such as lithium metal oxides, sodium metal oxides, and sulfur-based materials (the Examiner notes that this list of compound classes is non-exhaustive).
The limited number of examples described in the disclosure does not provide a representative number of species sufficient to show the inventor was in possession of the claimed genus of a positive electrode active material that results in the satisfaction of Formula (I) in independent claim 1.
Claims 2-16 are dependent on claim 1 and therefore, for the reasons outlined with respect to claim 1, these claims also contain 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.
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 1-16 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.
Regarding claims 1-5 and 13-15, claims 1-5 and 13-15 recite the limitation "the step coating". There is insufficient antecedent basis for this limitation in these claims. It is unclear if “the step coating” refers to an individual step coating of the “group of step coatings” or refers to all of the step coatings of the “group of step coatings” taken together. For the purpose of examination, “the step coating” is interpreted as indicating an individual step coating of the “group of step coatings.
It is suggested that these claims be amended to recite “a step coating of the group of step coatings”.
Claims 6-12 and 16 are indefinite as they depend from an indefinite base and fail to cure the deficiencies of said claim.
Regarding claim 5, claim 5 recites “the binder and the ceramic material are in a mass ratio of the binder to the ceramic being from 1 to 8:1 to 9. It is unclear what the bounds of value of the ratio are. It is unclear if the range is (1 to 8) : (1 to 9) or (1) to (8:1) to (9).
For the purpose of examination, this limitation is interpreted as the ratio of binder to ceramic material can be any combination of (1 to 8) to (1 to 9). For example, 1:1, 8:9, 1:9, and 8:1.
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.
Claims 1-6, 12, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamae (US 2019/0372153 A1) in view of Okano (US 2021/0265617 A1) and ACS (How Comparable Are Sodium Ion Batteries to Lithium Ion Counterparts. ACS Energy Letters. 5, 3544-3547 (2020)).
Regarding claims 1, 2, and 12, Reference Example 4 of Miyamae (Miyamae [118]) teaches an electrochemical device (lithium secondary battery) comprising:
a positive electrode plate (positive electrode, Miyamae [107-108])
and a negative electrode plate (Miyamae [118]),
wherein the positive electrode plate comprises a positive electrode current collector (Al foil, Miyamae [108]) and a positive electrode active material (lithium transition metal oxide containing Li, Ni, Co, and Al (NCA), Miyamae [108]),
and the negative electrode plate comprises a negative electrode current collector (copper foil, Miyamae [118]) and a group of step coatings (protrusions, Miyamae [118]) disposed on a surface of the negative electrode current collector close to the positive electrode plate (Miyamae [114-115, 118]).
a thickness of one of the step coatings (L) being 50 µm (average height, Miyamae [118])
Claim 2: w = 1 mm, W = 22 mm, 0.05W = 1.1, 1 ≤ 1 ≤ 1.1 (Miyamae [111 and 118])
The value for the theoretical volume gram capacity of sodium metal (X) is taken to be 1131 mAh/cm3 as recited in paragraph [32] of the instant specification (1166 mAh/g * 0.97 g/cm3 = 1131 mAh/cm3).
Miyamae is silent regarding the weight of the positive electrode active material per unit area on the positive electrode current collector (ga, g/cm2) and the gram capacity of the positive active material (Ca, mAh/g).
Miyamae teaches that the thickness (height, corresponds to L in Formula (I) of claim 1) of the step coatings (protrusions) “may be determined in accordance with the amount of lithium metal that is deposited” (Miyamae [38]).
Okano teaches step coatings (spacers) on an electrode to provide a space for storing deposited lithium metal (Okano [21]), wherein the thickness of the spacer (height, corresponds to L in Formula (I) in claim 1) is determined “depending on the capacity per unit area of the positive electrode” (Okano [25]). It is noted that Ca * ga, as shown in the numerator of Formula (I), is capacity per unit area.
C
a
*
g
a
→
m
A
h
g
*
g
c
m
2
=
m
A
h
c
m
2
Since Miyamae and Okano both teach step coatings (Miyamae protrusions, Okano spacers) that provide a space for deposited lithium metal, Miyamae teaches that the thickness of the step coatings is dependent on the amount of lithium metal deposited, and Okano teaches that the thickness of the step coatings is determined according to the capacity per unit area of the positive electrode, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the thickness of the step coatings (L) in the electrochemical device of Miyamae according to the amount and identity of the positive electrode active material, including thickness values resulting in the satisfaction of Formula (I) of claim 1, in order to obtain an electrochemical device capable of accommodating deposited lithium metal on the negative electrode current collector.
Miyamae further teaches the positive electrode active material comprising a lithium transition metal oxide (Miyamae [107-108]; Reference Example 4 uses the same preparation method as Reference Example 1, except for the negative electrode). Miyamae further teaches that the positive active material is a material capable of occluding and releasing lithium ions (Miyamae [70]).
ACS teaches that sodium ion batteries have the advantage of lower cost due to the higher natural abundance and lower cost of sodium compared to lithium (ACS pg. 3546 right column). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the lithium transition metal oxide positive electrode active of Miyamae for a sodium transition metal oxide and fabricate a sodium metal battery in order to reduce cost.
Regarding claim 3, Miyamae in view of Okano and ACS teaches all features of claims 1 and 2, as described above. Miyamae teaches the step coating having a width of 1 mm. Miyamae does not teach the width of the negative electrode current collector being 100 mm to 1000 mm. However, Miyamae teaches that the size of the step coatings (protrusions) “is not limited”, the size of the step coatings can be tuned to achieve a ratio (total area of step coatings/area of the current collector) of 0.2% to 70%, and the width of the step coatings may be 0.1 mm to 10 mm (Miyamae [58]).
Therefore, since Miyamae teaches that the size of the step coatings is not limited and that the size and width may be tuned, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to fabricate an electrochemical device according to Miyamae wherein the width of the negative electrode current collector is 100 mm to 1000 mm and the width of the step coating is 1 mm to 50 mm in order to obtain an electrochemical device with suitable size and performance for a desired electrochemical application.
Regarding claims 4 and 5, Miyamae in view of Okano and ACS teaches all features of claim 1, as described above. Miyamae further teaches the step coating comprising polyimide and a ceramic material (polyimide, alumina, Miyamae [118]).
Regarding claim 6, Miyamae in view of Okano and ACS teaches all features of claim 1, as described above. Miyamae further teaches the negative electrode current collector comprising a metal foil current collector (copper foil, Miyamae [118]).
Regarding claim 13, Miyamae in view of Okano and ACS teaches all features of claim 1, as described above. Miyamae teaches the step coatings being formed by dispensing an ink in a line-like shape and performing hot-air drying (Miyamae [110]). Claim 13 is a product-by-process claim (“can be formed by transfer coating, extrusion coating and/or spray coating”).
Although Miyamae Reference Example 4 does not expressly teach using transfer coating, extrusion coating, and/or spray coating, it is noted that “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”. Further, “the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, See MPEP 2113.
Additionally, since the step coatings of Miyamae comprise compounds disclosed in the instant specification to be capable of being formed using these methods, there is a reasonable basis to conclude that the step coatings of Miyamae “can be formed” using one of these methods (polyimide, Al2O3, instant specification [35-36]).
Regarding claim 14, Miyamae in view of Okano and ACS teaches all features of claim 1, as described above. Modified Miyamae further teaches the space formed between the negative electrode current collector and the step coatings being used for accommodating sodium de-intercalated from the positive electrode plate (Miyamae [44], substituted for a sodium battery results in sodium de-intercalation instead of lithium).
Regarding claim 15, Miyamae in view of Okano and ACS teaches all features of claim 1, as described above. Miyamae further teaches a space formed by the negative electrode current collector and two step coatings being a basin shape (Miyamae Reference Example 4 has stripe-like protrusions, Fig. 3 depicts a side view of stripe-like protrusions and a basin shape formed between the current collector and two protrusions).
Regarding claim 16, Miyamae in view of Okano ACS teaches all features of claim 1, as described above. Miyamae further teaches that nonaqueous electrolyte secondary batteries are used in electronic devices such as personal computers and smartphones (Miyamae [2]). Since Miyamae teaches that it is known and suitable for electronic devices to contain nonaqueous secondary batteries, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the electrochemical device of Miyamae to an electronic device such as a personal computer or smartphone in order to obtain a device capable of undergoing charging/discharging.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamae in view of Okano and ACS, as applied to claim 1 above, and in further view of Perveen (Perveen, T. et al. Prospects in anode materials for sodium ion batteries – A review. Renewable and Sustainable Energy Reviews. 119, 109549 (2020)) and Ravdel (US 2012/0315537 A1).
Regarding claims 7-9, Miyamae in view of Okano and ACS teaches all features of claim 1, as described above.
Miyamae does not expressly teach an embodiment wherein,
the negative electrode current collector comprises an aluminum-based current collector comprising an aluminum foil or an aluminum alloy foil (claim 7)
the aluminum-based current collector comprising a polymer base film and aluminum foils and/or aluminum alloy foils formed on both sides of the polymer base film (claim 8)
the polymer base film being selected from a compound recited in claim 9
As described above, modified Miyamae teaches using sodium transition metal oxide and a sodium battery.
Perveen teaches that it is known and desirable to use aluminum as a negative electrode current collector in sodium batteries since aluminum is inexpensive and does not alloy with sodium (Perveen pg. 2 right column).
Ravdel teaches that is desirable for batteries to be lighter weight and that using lighter weight current collectors that still have sufficient strength is a way to lower the weight of a battery (Ravdel [6]). Ravdel teaches a current collector for secondary batteries having a polymer base (polymer film, Ravdel claim 1) and aluminum foils formed on bother sides of the polymer base film (Ravdel claim 20) that reduces “the weight of a battery, thereby increasing a specific energy and/or a specific power of the battery” (Ravdel [39]). Ravdel further teaches the polymer film being a thermoplastic material such as polyamide, polyethylene terephthalate, polyimide, polystyrene, polyvinyl chloride, polycarbonate, and polyvinylidene fluoride (Ravdel [48-54]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the copper foil negative electrode current collector of modified Miyamae (sodium battery, Miyamae in view of Okano and ACS) for the current collector of Ravdel, thus resulting in an aluminum-based current collector comprising aluminum foil (claim 7) comprising a polymer base film and aluminum foils formed on both sides of the polymer base film (claim 8) wherein the polymer base film is one of the compounds recited in claim 9, in order to reduce the weight of the current collector.
Regarding claim 10, Miyamae in view of Okano, ACS, Perveen, and Ravdel teaches all features of claims 1 and 7, as described above. Miyamae further teaches that the roughness of the current collector may be 1 µm or less (Miyamae [40]).
The roughness range of Miyamae substantially overlaps the claimed range in the instant claim 10. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have selected from the overlapping portion of the range taught by Miyamae, because overlapping ranges have been held to establish prima facie obviousness.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Miyamae in view of Okano and ACS, as applied to claim 1 above, in view of Yoshida (US 2013/0273438 A1).
Regarding claim 11, Miyamae in view of Okano and ACS teaches all features of claim 1, as described above. Miyamae further teaches a distance between two step coatings (P, 4 mm, Miyamae [111]) and the two step coatings not being directly opposite to the positive electrode active material (there is a separator between the step coatings and the positive electrode, Miyamae [115]).
Miyamae is silent regarding a width of the positive electrode active material. However, Yoshida teaches the use of NCA particles as a positive electrode active material, wherein the average particle size is 6 µm ([105]).
Since Yoshida teaches that 6 µm is a suitable particle size for NCA particles used in secondary battery positive electrodes, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to use NCA particles having a size of 6 µm in the positive electrode of Miyamae, thus resulting in a distance between two step coatings being greater than a width of the positive electrode active material (4 mm > 6 µm), in order to use an NCA particle size that is known to be suitable.
Response to Arguments
Response – Claim Objections
The objection to the claims due to line spacing is overcome by applicant’s amendments to the claims in the response received February 27, 2026. This objection to the claims is withdrawn.
The objections to claims 4-5 and 7-9 due to informalities are overcome by applicant’s amendments to claims the claims in the response received on February 27, 2026. The objections to claims 4-5 and 7-9 are withdrawn.
Response – Claim Rejections 35 USC § 112
The rejections of claims 1-16 under 35 U.S.C. 112(b) due to no positive recitation of sodium metal, claim 3 due to a broad range or limitation together with a narrow range or limitation, claim 5 due to lack of clarity regarding options (1), (2), and (3), and claims 11, 14, and 15 for insufficient antecedent basis are overcome and withdrawn due to applicant’s amendments to the claims in the response received February 27, 2026.
Applicant’s amendments necessitated the updated 112b rejection for claim 5 presented above.
On pages 5-6 of the response, Applicant appears to allege that the instant disclosure complies with the written description requirement.
This argument is not persuasive. The disclosure does not adequately reflect the structural diversity of the claimed genus (positive electrode active material). The instant disclosure only presents examples wherein the positive electrode material is Na4Fe3(PO)4P2O7, the gram capacity (Ca) is 120 mAh/g, and the weight of positive active material per unit area (ga) is 30 mg/cm2 (instant specification Table 1). However, the scope of instant claim 1 includes all positive active materials and is not limited to Na4Fe3(PO)4P2O7 and these specific values of Ca and ga. The Examples presented in Table 1 of the instant specification do not adequately represent the full scope of positive electrode active materials, wherein the scope of positive electrode active materials includes various compound classes such as lithium metal oxides, sodium metal oxides, and sulfur-based materials (the Examiner notes that this list of compound classes is non-exhaustive).
Though the instant disclosure lists positive active materials (instant specification [0042]), the limited number of examples described in the disclosure does not provide a representative number of species sufficient to show the inventor was in possession of the claimed genus of a positive electrode active material that results in the satisfaction of Formula (I) in independent claim 1.
Response – Claim Rejections 35 USC § 103
Applicant’s arguments with respect to claims 1 and 14 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tajima (US 2013/0071739 A1): appears to disclose protrusions on a current collector (Fig. 1A, [60]) for use in a power storage device (abstract).
Sugiyama (US 2005/0074671 A1): appears to disclose a current collector having protrusions (Fig. 2) for use in secondary batteries ([2]).
Lee (US 2006/0110661 A1): appears to disclose protrusions on a current collector that lead to the prevention of volume deformation ([12-14], Fig. 1B, claim 1).
Sawa (US 10,109,856 B2): appears to disclose pillar portions disposed on a current collector (abstract, Fig. 1-3) for use in secondary batteries (title).
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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/J.S.C./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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