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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8 and 11-15 in the reply filed on 3/21/26 is acknowledged. The traversal is on the ground(s) that the groups share a common inventive concept. This is not found persuasive because the instant application is not a 371 application of PCT application, but a CON application. Therefore, unity of invention standard for a 371 application has not been applied. The examiner has provided the reason for distinct invention in the previous office action mailed on 2/11/26
The requirement is still deemed proper and is therefore made FINAL.
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 1-6, 8, and 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, and 14-18 of U.S. Patent No. 11,695,151 (hereinafter ‘151 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim scope of ‘151 patent encompasses the claim scope of the instant application.
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) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (KR 10-1752869 B1, hereinafter Kim).
Re Claim 1. Kim teaches a casing (Fig. 1-3) for a lithium metal secondary battery comprising:
a battery casing material (item 100);
at least one releasable capsule (item 130) attached to an inner surface of the casing material to cover the inner surface of the casing material; and
a release solution (item 140) contained in the releasable capsule,
wherein the releasable capsule comprises a capsule coating film (item 130) and a capsule inner space (Fig. 1-3) surrounded by the capsule coating film,
the release solution is contained in the capsule inner space (Fig. 1-3), and
the release solution comprises a release agent and a solvent (P4).
Re Claim 2. Kim teaches wherein the release agent comprises epoxy resin (P4).
Claim(s) 1, 4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Niida et al. (JP 2010-073595 A, hereinafter Niida, cited by applicant).
Re Claim 1. Niida teaches a casing for a lithium metal secondary battery comprising:
a battery casing material (para. 11);
at least one releasable capsule (Fig. 1, para. 11) attached to an inner surface of the casing material to cover the inner surface of the casing material; and
a release solution (item b) contained in the releasable capsule,
wherein the releasable capsule comprises a capsule coating film (item a) and a capsule inner space surrounded by the capsule coating film (Fig. 1),
the release solution is contained in the capsule inner space (Fig. 1), and
the release solution comprises a release agent and a solvent (para. 32).
Re Claim 4. Niida teaches wherein the releasable capsule comprises a polymer resin as a capsule coating film ingredient (para. 23), and the capsule coating film is ruptured by a penetration member inserted from an outside of the casing so that the release solution contained in the capsule inner space is discharged (functional limitations).
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114.
Re Claim 7. Niida teaches wherein a size of the releasable capsule is 5 µm (para. 32).
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2131.03.
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.
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.
Claim(s) 6 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niida.
Niida fails to specifically teach that the release agent is present in an amount of 0.1-80 wt%/20 to 30 wt% based on a total weight of the release solution.
However, since the amount of release agent would determine the effectiveness of flame retardation, one would perform routine experimentation to find the optimum amount of release agent in the release solution.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP 2144.05, II.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim or Niida as applied to claim 1 above, and further in view of Yu et al. (KR 10-2016-0059991 A, hereinafter Yu, cited by applicant, see US 2017/0352844 A for English translation).
Kim and Niida teaches a lithium metal secondary battery (Kim, P2 & Niida, para. 11) comprising:
a battery casing according to claim 1 (see rejection of claim 1); and
an electrode assembly contained in the battery casing (Kim, P2 & Niida, para. 11),
wherein the electrode assembly comprises a negative electrode, a positive electrode and a separator interposed between the negative electrode and the positive electrode (Kim, P2 & Niida, para. 11).
Kim and Niida fails to specifically teach that the negative electrode includes lithium metal as a negative electrode active material .
The invention of Yu encompasses secondary battery. Yu teaches that the negative electrode includes lithium metal as a negative electrode active material (para. 63).
In view of Yu, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Kim or Niida to employ lithium metal as a negative electrode active material, since using a well-known negative electrode active material is within purview of one skill in the art.
Conclusion
The rejections above rely on the references for all the teachings expressed in the text of the references and/or one of ordinary skill in the art would have reasonably understood from the texts. Only specific portions of the texts have been pointed out to emphasize certain aspects of the prior art, however, each reference as a whole should be reviewed in responding to the rejection, since other sections of the same reference and/or various combinations of the cited references may be relied on in future rejections in view of amendments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN E YOON whose telephone number is (571)270-5932. The examiner can normally be reached Monday-Friday 9 AM- 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN E YOON/Primary Examiner, Art Unit 1735
4/4/2026
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