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
Claims 7-8 and 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 11, 2026.
Applicant's election with traverse of Group I, Species I in the reply filed on February 11, 2026 is acknowledged. The traversal is on the ground(s) that no significant burden exists to examine and search all inventions.
This is not found persuasive because burden has been set forth in the restriction dated December 15, 2025.
Regarding the Group I and Group II reasons of burden include:
“(A) Separate classification thereof (as set forth above): This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search.
(C) A different field of search (in light of the differences set forth above): Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together).”
Regarding the species:
“(B) A separate status in the art when they are classifiable together (in light of the structural differences as can be seen in the different figures): Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search (in light of the differences set forth above): Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together).:
See MPEP §808.02 regarding burden.
Thus the argument is not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed June 7, 2023, October 16, 2023, February 1, 2024, April 21, 2025 have been placed in the application file and the information referred to therein has been considered as to the merits.
Drawings
The drawings are objected to because pages 5-13 of the drawings filed as drawings but are not given associated figure numbers; additionally, the disclosure does not address these tables in the “Brief Description of Drawing” section. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 objected to because of the following informalities: not including an indefinite article before “alkali metal” and “alkali metal alloy” (line 3) (‘an alkali metal and an alkali metal alloy’). 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.
Claims 2, 3, and 11-14 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.
Claim 2 recites a percentage with respect to “an amount.” However, units are not set forth. Amount can be measured in many different ways, i.e. weight, volume, mols. The ratios regarding these different units are materially different. Thus, the claim language is unclear and indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “the gas reducer is 1-10% of an amount”, and the claim also recites “optionally 3-5%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “5-100m2/g”, and the claim also recites “optionally 20-50m2/g” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 recites that the solvent is “a carbonate-based solvent, optionally a fluorocarbonate-based solvent” (line 2). It is unclear what requirement is needed for the solvent (carbonate or fluorocarbonate). Thus, the metes and bounds of the claim are not clear, and the claim is indefinite.
Claim 11 recites the limitation "the solvent" in line 1. There is insufficient antecedent basis for this limitation in the claim. (Note: Antecedent basis is given in claim 2. However, claim 11 is dependent upon claim 1.)
Claim 13 recites the limitation "the positive-electrode material" in line 1. There is insufficient antecedent basis for this limitation in the claim. (Note: Antecedent basis is given in claim 6. However, claim 11 is dependent upon claim 1.) Since claim 14 is dependent upon claim 14, it is rejected for the same reason.
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.
Claim(s) 1-2, 4-5, and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 20130024595 (Kim et al.).
As to claim 1, Kim et al. teach a battery, comprising a battery housing (battery exterior) (para 0070), a positive electrode plate (positive electrode) (para 0047), a negative electrode plate (negative electrode (para 0048), and a non-aqueous electrolyte (para 0089-0090), wherein a gas reducer is disposed inside the battery housing (i.e. within the electrode) (para 0070, 0073, 0095-0097), the gas reducer comprises at least one of alkali metal and alkali metal alloy (metal powders such as Li, Na, K, Rb, Cs, Fr) (para 0065-0066), and the gas reducer is in no contact with or in non-electrical contact with the negative electrode plate (as it is within the cathode (para 0095-0097), and thus is electrically insulated from the anode).
(Note 1: Although Kim et al. teach alkali metals as part of their recognized oxygen scavengers, no example/sufficient specificity exists to pick, Li, Na, K, Rb, Cs, Fr). Thus, Kim et al.’s teaching is not seen to anticipate the claimed invention. However, Kim et al. renders obvious the use of alkali metals (Li, Na, K, Rb, Cs, Fr), as such oxygen scavengers is within the art and thus would obvious to one of ordinary skill in the art to use one of the listed alkali metals (Li, Na, K, Rb, Cs, Fr).
Note 2: The above reasoning is applicable regarding obviousness to all of the teachings of Kim et al., wherein a list of materials are listed as potential materials for a specific purpose (i.e. oxygen scavenger, active materials, etc.) and will not be reiterated below for brevity’s sake.)
As to claim 2, Kim et al. generally teach of adding an amount of oxygen scavenger to efficiently remove air within the battery while preventing the battery capacity per volume from decreasing (para 0062), as well as setting forth that the scavenger can be 10% of the electrolyte (para 0103).
Thus, Kim et al. does not specifically teach an amount of substance of the gas reducer is 1-10% of an amount of substance of a solvent of the non-aqueous electrolyte, optionally 3- 5%.
However, Kim et al. renders this limitation obvious.
Rationale 1: A teaching of 10% of the electrolyte (para 0103) would be close to the claimed range of 1-10% with respect to the solvent, as the electrolyte includes both the solvent and salt (para 0089-0090). Thus, 10% of the scavenger would be slightly more than 10% regarding the solvent, taking the fact that salt is added into account, which is close to the claimed range. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (In re Woodruff, 16 USPQ2d 1935,1937 (Fed. Cir. 1990)) Also see MPEP §2144.05(I).
Rationale 2: The amount of oxygen scavenger added is a result effective variable, as it effects being able to efficiently remove air (more material removes more air) within the battery and the battery capacity per volume (more material decreases the capacity per volume, as it occupies space that could be occupied by active materials) (para 0062). It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize the amount of oxygen scavenger (and thus its amount, relative to the amount of electrolyte solvent present in the battery, as all are materials within the system and factor into battery capacity per volume – i.e. -10% of an amount of substance of a solvent of the non-aqueous electrolyte, optionally 3- 5%), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
As to claim 4, Kim et al. teach the gas reducer is lithium metal or sodium metal (Li, Na) (para 0065, 0066).
As to claim 5, Kim et al. teach the gas reducer is disposed on a positive electrode current collector of the positive electrode plate (in active material slurry and applied to a current collector (foil)) (para 0100-0101).
As to claim 11, Kim et al. teach wherein the solvent of the non-aqueous electrolyte is a carbonate-based solvent, optionally a fluorocarbonate-based solvent (carbonates one of four electrolyte types (small number solvents for sufficient specificity)) (para 0089).
As to claim 12, Kim et al. teach the battery is a lithium-ion battery or a sodium-ion battery (lithium ion, as indicated by lithium ion passage; para 0088).
As to claim 13, Kim et al. teach the positive-electrode material of the positive electrode plate is a ternary positive-electrode material, lithium iron phosphate, sodium iron phosphate, or lithium cobalt oxide, and/or a negative-electrode material of the negative electrode plate is lithium metal, sodium metal, or graphite (0.5 Li2MnO3 · 0.5 LiNi0.33Co0.33Mn0.33O2 set forth for the positive electrode (para 0996); Li metal included as a negative electrode active material (para 0083-0084)).
As to claim 14, Kim et al. teach the positive-electrode material of the battery is lithium nickel cobalt manganate or lithium nickel cobalt aluminate, and the negative- electrode material of the battery is lithium metal (0.5 Li2MnO3 · 0.5 LiNi0.33Co0.33Mn0.33O2 set forth for the positive electrode (para 0996); Li metal included as a negative electrode active material (para 0083-0084)).
As to claim 15, Kim et al. teach an apparatus (vehicles, power tools) (para 0093), provided with the battery according to claim 1 (battery of claim 1 set forth in the rejection to claim 1, incorporated herein but not reiterated herein for brevity’s sake).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al., as applied to claim 1 above, and further in view of US 2013/0343983 (Ito et al.).
As to claim 3, Kim et al. do not teach wherein a specific surface area of the gas reducer is 5-100m2/g, optionally 20-50m2/g.
However, Ito et al. generally teach that surface area affects gas adsorption (para 0045). Thus, the surface area of is a result effective variable, as it effects being able to adsorb gas (para 0045). It would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize the surface area of the gas reducer (5-100m2/g, optionally 20-50m2/g), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It has been held that discovering that general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller,105 USPQ 233. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Also, see MPEP §2144.05(II)(B).
Claim(s) 6, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al., as applied to claim 1 above, and further in view of US 2012/0088129 (Kaneda et al.).
As to claim 6, Kim et al. teach wherein the positive electrode current collector of the positive electrode plate at an end of a battery cell has a first surface and a second surface that are opposite, a positive-electrode material is disposed on the first surface (para 0096-0097).
Kim et al. do not teach the gas reducer is disposed on the second surface.
However, in the same field of endeavor, Kaneda et al. teach of an inclusion of gas adsorbent [22] (gas reducer) in pores of the current collector [4] (fig. 3; para 0040). The motivation for having the gas adsorbent (gas reducer) within the current collector is to produce a battery that reduces swelling without degrading the battery characteristics (para 0042).
At the very least, substituting having the gas reducer in active material layer with having the gas reducer in the current collector would yield the predictable result of reducing the gas/swelling in a battery (as the substituted components and their functions were known in the art). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to substitute having the gas reducer in active material layer with having the gas reducer in the current collector, as the substitution would yield the predictable result of reducing the gas/swelling in a battery (as the substituted components and their functions were known in the art). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
The combination would render the claim limitation (the gas reducer is disposed on the second surface, while the positive electrode active material is on the first), as pores around the second surface that hold the gas reducer would be applicable to the limitation. Office personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Also, limitations appearing in the specification but not recited in the claim are not read into the claim. See In re Zletz, 893F.2d 319, 321-22,13 USPQ2d, 1320, 1322 (Fed. Cir. 1989).
As to claim 9, Kim et al. teach wherein the positive electrode current collector of the positive electrode plate at an end of a battery cell has a first surface and a second surface that are opposite, a positive-electrode material is disposed on the first surface (para 0096-0097).
Kim et al. do not teach the gas reducer is sheet-shaped.
However, in the same field of endeavor, Kaneda et al. teach of having a gas adsorbing layer [19] (thus being sheet-shaped) adjacent to the positive active material (fig. 2a; para 0022-0023). The motivation for having the gas adsorbent (gas reducer) within the current collector is to produce a battery that reduces swelling without degrading the battery characteristics (para 0024).
At the very least, substituting having the gas reducer in active material layer with having the gas reducer as a separate layer (thus being sheet-shaped) would yield the predictable result of reducing the gas/swelling in a battery (as the substituted components and their functions were known in the art). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to substitute having the gas reducer in active material layer with having the gas reducer as a separate layer (thus being sheet-shaped), as the substitution would yield the predictable result of reducing the gas/swelling in a battery (as the substituted components and their functions were known in the art). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
As to claim 10, Kim et al. teach the presence of a housing (battery exterior) (para 0070).
Kim et al. do not teach any specifics to the shape of the exterior, i.e. that the battery is a pouch battery, a prismatic battery, a button battery, or a cylindrical battery.
However, Kaneda et al. teach of a battery with an exterior package [14] that is a pouch (laminate) (figs. 1A, 1B; para 0020). Substituting having an unspecified housing with a pouch housing would yield the predictable result of providing a housing to the battery (as the substituted components and their functions were known in the art). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to a housing of unknown shape with a pouch housing, as the substitution would yield the predictable result acting as a battery battery (as the substituted components and their functions were known in the art). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2011/0143204 (Paik et al.) teaches the presence of an oxygen scavenger material in layer [104a] next to a current collector [110], separate from active material layer [104b] (fig. 2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:30 -7:30(AM) and 9:00-4:30 ET.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759