DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 1 -20 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 pre-AIA the applicant regards as the invention.
Claims 1 – 4 and 14 – 20 are rejected because the term ‘viscosity modifier’ is indefinite as, at least in part, a relative term. The term “viscosity modifier” in claim 1 is a relative term which renders the claim indefinite. The term “viscosity modifier” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The issue is that there is no clear definition of what constitutes ‘modifying’; i.e. changing by 1%? 10%? Increasing only? Decreasing or increasing? The added limitations in claim 5 are deemed to add sufficient structure to render moot the limitation ‘modifier’, though claim 5 and its dependents are not without their own 112 issues.
Claims 1 – 20 are rejected because the term “limits penetration” is a relative term. The term “limits penetration” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. I.e. how much penetration must be prevented for it to be sufficiently ‘limiting’?
Claims 1 – 20 are rejected because the term “reactive fluid” is a relative term. The term “reactive fluid” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. I.e. how much reaction must the fluid have for it to be a ‘reactive fluid’?
Claims 5 – 13 are rejected because the term ‘viscous’ is a relative term. The term “viscous” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. I.e. how “viscous” must something be to meet the term ‘viscous polymer’?
Claims 11 and 13 are indefinite because it is unclear if ‘vegetable polymer’ only means a naturally occurring ‘vegetable’ polymeric material or synthetic versions of these materials? For the purpose of evaluating the prior art, the Examiner has taken ‘vegetable’ to be naturally occurring; i.e. those listed in claim 12 for example.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The term ‘film’ does not convey any different structure than ‘layer’; so the added limitation of claim 16 does not further limit claim 1, since claim 1 already recites that these are ‘layers’. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 17 and 20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Lee et al. (U.S. Patent App. No. 2020/0259162 A1).
Regarding claim 1, Lee et al. discloses a laminate for a lithium-ion battery (Title; Abstract), the laminate comprising: at least one cathode layer, at least one anode layer, and at least one electrolyte layer disposed between the at least one cathode layer and the at least one anode layer (Paragraphs 0092 – 0109), and a viscosity modifier (clay particles and CMC present as part of the negative electrode material layer) present on at least a portion of the laminate (i.e. present on the negative electrode layer or can be considered ‘present on’ the electrolyte that is contacting said negative electrode layer); wherein the viscosity modifier limits penetration of a reactive fluid into the laminate (either inherent as these materials are identical to those claimed in the dependent claims or per explicit teaching of the thixotropic behavior of the clay particles in Paragraph 0026).
Regarding claim 2, Lee et al. teaches that the entire layer is coated, which necessarily also includes the edge (the Examiner notes that claim 2 does not recite that the modifier is _only_ at the edge…).
Regarding claims 3 and 4, edges are formed by whatever process necessarily results in an edge. “Cutting” is a process limitation in a product claim (claim 3) as is “cauterizing” (claim 4). “[E]ven 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 in 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 product was made by a different process.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, ‘cut edge’ does not provide any further structural limitations and whether one calls the edge an ‘edge’ or a ‘plug’, there is no structural difference.
Regarding claim 5, Lee et al. disclose both as noted above.
Regarding claims 6 – 10, Lee et al. disclose smectite clay, Laponite, and Bentonite (Paragraph 0033). Also note that these claims do NOT require these materials to be selected, so the disclosure of CMC as a ‘viscous polymer’ also reads on all of these claims.
Regarding claims 11 – 13, Lee et al. disclose CMC (Abstract). Regarding claim 12, the disclosure of the thixotropic as a non-Newtonian shear thinning agent (i.e. the clay) reads on this claim as there is no positive recitation that it must be the ‘viscous polymer’ selected.
Regarding claims 14, 15 and 17, much like the limitations in claim 2, since Lee et al. disclose covering the entire layer with the composition including the viscosity modifier it necessarily encompasses the claimed regions (as they are not restricted to being ONLY in those regions).
Regarding claim 16, these limitations are met as applied to claim 1 as there is no distinction between a ‘layer’ and a ‘film’.
Regarding claim 20, these limitations are met for the reasons set forth above.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 18 and 19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lee et al. as applied above.
Lee et al. fails to disclose the amount of additive for either the clay or CMC meeting the claimed limitations, per se (though see examples, which appear to teach overlapping values).
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of either the clay or CMC viscosity modifier through routine experimentation, especially given the teaching in Lee et al. regarding the desire to add this in comparable amounts per the examples. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1 – 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Huang et al. (U.S. Patent App. No. 2014/0220233 A1) in view of Lee et al. (‘162 A1).
Regarding claim 1, Huang et al. discloses a laminate for a lithium-ion battery (Title; Abstract; Paragraph 0003) including at least a separator, and a viscosity modifier (ceramic particles and/or cellulose present on the edge of the separator – Title; Abstract; and at least Paragraphs 0036 – 0038) present on at least a portion of the laminate (ibid); wherein the viscosity modifier limits penetration of a reactive fluid into the laminate (deemed inherent per the teaching of cellulose and the relative term aspects of this limitation, as well as deemed inherent in the teaching of ‘ceramic particles’, which are similar to the clay material claimed in dependent claims).
Huang et al. fail to disclose the additional layers in the secondary battery.
However, Lee et al. teach that these layers are conventional layers in a secondary battery, including at least one cathode layer, at least one anode layer, and at least one electrolyte layer disposed between the at least one cathode layer and the at least one anode layer (Paragraphs 0092 – 0109).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Huang et al. to use at least one cathode, anode and electrolyte layer as claimed as taught by Lee et al., since these layers are necessary for the battery to function as a lithium ion secondary battery.
Regarding claim 2, Huang et al. teach forming the separator coating on the edge (see citations above).
Regarding claims 3 and 4, edges are formed by whatever process necessarily results in an edge. “Cutting” is a process limitation in a product claim (claim 3) as is “cauterizing” (claim 4). “[E]ven 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 in 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 product was made by a different process.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, ‘cut edge’ does not provide any further structural limitations and whether one calls the edge an ‘edge’ or a ‘plug’, there is no structural difference.
Regarding claim 5, Huang et al. disclose cellulose, while Lee et al. further teaches that CMC is a preferred cellulose material used in secondary battery coatings (at least Title; Abstract; examples), along with adding thixotropic clay materials to increase the thickening effect of the CMC (Paragraph 0026). As such, the Examiner deems that there is sufficient teaching to render obvious both CMC (‘viscous polymer’) and clays/ceramic particles such as Laponite, smectite clay, Bentonite, etc., thereby teaching both the claimed compositions.
Regarding claims 6 – 10, as noted above, Huang et al. teach cellulose and ceramic particles and Lee et al. disclose smectite clay, Laponite, and Bentonite (Paragraph 0033) as aiding the properties of cellulose. Also note that these claims do NOT require these materials to be selected, so the disclosure of CMC as a ‘viscous polymer’ also reads on all of these claims. It would have been obvious to use the taught clay particles as the ‘ceramic’ particles as these would serve both the taught ‘ceramic’ particle purposes and aid in the thickening effect of the CMC.
Regarding claims 11 – 13, as noted above, Huang et al. teach cellulose and Lee et al. disclose CMC as a preferred form of cellulose. Regarding claim 12, the disclosure of the thixotropic as a non-Newtonian shear thinning agent (i.e. the clay) reads on this claim as there is no positive recitation that it must be the ‘viscous polymer’ selected.
Regarding claims 14 and 15, Huang et al. discloses the separator coating on the entire surface of the separator, including the edges. This necessarily encompasses the claimed limitations as they do not require the coating to be ONLY on the recited portion/edge.
Regarding claim 16, these limitations are met as applied to claim 1 as there is no distinction between a ‘layer’ and a ‘film’.
Regarding claims 17 and 20, these limitations are met for the reasons set forth above.
Regarding claims 18 and 19, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the amount of either the ceramic/clay particles or CMC “viscosity modifier” through routine experimentation, especially given the teaching in Huang et al. and/or Lee et al. above regarding the desire to add these components. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: while no claim has been indicated as allowable and there are several 112 issues that need to be resolved, the Examiner notes that the prior art fails to disclose a coating specifically to prevent penetration of fluid into an edge of the laminate by coating a composition comprising a non-Newtonian shear thinning agent or a polymer meeting the limitations of claim 11 _only_ on the edge portion of the laminate (i.e. not as a surface layer within the laminate). Presently no claims capture this disclosed aspect and any amendments towards this end would need to draw support from the as-filed disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
December 31, 2025