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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim interpretation:
Regarding the limitation(s) "on" in claims 1-15, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that "on" allows for the layers to be on any side (emphasis added). In other words, claims are open to include any order of the layers. For example, a second cathode active material layer can be disposed on either side of a second solid electrolyte layer. This would be similar to the claimed positioning of a second cathode current collector.
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.
Claims 1-3, 6, 8-10, and 15 are rejected under 35 U.S.C. 103 as obvious over Du et al. (US 12,322,782).
Regarding claims 1-3 and 10, Du discloses an all-solid-state battery comprising a composite membrane (026) comprising a first surface and a second surface, a first solid electrolyte layer (006) disposed on the first surface of the composite membrane, a first cathode active material layer (008) disposed on the first solid electrolyte layer, a first cathode current collector (010) disposed on the first cathode active material layer, a second solid electrolyte layer (006), a second cathode active material layer (008) disposed on the second solid electrolyte layer, a second cathode current collector (010) disposed on the second cathode active material layer, (Fig. 4D), wherein the composite membrane comprises a conductive material, pores, and metal powder configured to be alloyable with lithium (col. 14, lines 35-59: amorphous (soft carbon), CNT, carbon nanofibers, Ge and Sb).
Du fails to explicitly state that the composite membrane comprises a first layer, a second layer, and an intermediate layer, however, there is no structural or compositional distinction between said layers within the composite membrane as claimed, since the claims requires each layer of the composite membrane comprises a conductive material. Therefore, the examiner is taking the position that Du discloses the three sublayers within the composite membrane as claimed (uppermost stratum of Du’s composite membrane would corresponds to the claimed first layer, the middle stratum would correspond to the claimed intermediate layer, and the bottommost stratum would correspond to the claimed second 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 Du’s composite membrane matches the required first layer, second layer, and intermediate layer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to divide Du’s composite membrane, by calling it 3 sublayers, and thus achieve the claimed first, second, and intermediate layer.
Alternatively, “mere duplication of parts has no patentable significance unless a new and unexpected result is produced”. Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Duplication of Du’s composite membrane matches the required first layer, second layer, and intermediate layer. It would have been obvious, to one of ordinary skill in the art before the effective filing date of the claimed invention to duplicate Du’s composite membrane and thus achieve the claimed first layer, second layer, and intermediate layer.
Regarding claim 6, Du discloses that the composite membrane comprises carbon nanotubes. Given that carbon nanotubes naturally arrange in a three-dimension interconnected network with pores between adjacent carbon nanotube, Du discloses claimed net shape so that the composite membrane comprises pores. Further, Du discloses that the composite membrane comprises of Ge and Sb components, which would react with lithium thereby stored in the pores, resulting in retention of lithium at full charge.
Regarding claim 8, Du discloses the composite membrane as claimed, wherein the thickness is 10 um or more (col. 6, lines 61-65). It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 9, Du discloses the composite membrane comprising a thickness is 10 um or more (col. 6, lines 61-65). As set forth above, the boundaries of the first, second, and intermediate layer of the composite membrane are arbitrarily assigned because the composition is the same in each, and therefore, that all values within the range appears to be functionally equivalent. It would have been obvious to choose any thickness from that ranged based on the desired battery properties and that choosing thickness values would have rendered the claimed relationship between layer thicknesses obvious in the absence of showing criticality.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 15, Du discloses a vehicle as claimed (col. 38, lines 7-12).
Claims 4-5, 7, and 11-14 are rejected under 35 U.S.C. 103 as obvious over Du et al. (US 12,322,782) in view of Nakamura et al. (US 2014/0212762)
Regarding claims 4-5, Du discloses the composite membrane comprising the linear carbon material as set forth above, however, fails to explicitly disclose the dimensions as presently claimed.
Nakamura discloses an all-solid-state battery comprising of linear carbon material, with the dimensions as claimed ([0058]: diameter is 5-30 nm; [0060]: aspect ratio is not less than 100, thereby can acquire the length; alternatively: [0071]: diameter of 50-300 nm; and length is 0.4 or more of particle B, and Fig. 4-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Du’s dimension of the linear carbon material as claimed, since Nakamura discloses that this is known in the art to achieve high energy density [0010].
Regarding claim 7, given that Du in view of Nakamura discloses the composite membrane with the composition as claimed per claims 12-14, Du in view of Nakamura would intrinsically have the porosity of 0.1-50%.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 11, Du discloses that the composite membrane comprises of metal powder, such as Ge, however, fails to disclose having a median particle diameter of about 0.01-1 µm as presently claimed.
Nakamura discloses a composite membrane comprising of Ge powder with a diameter of 5-1000 nm [0032, 0038].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Du’s metal powder to have a diameter as claimed, as suggested by Nakamura, in order to successfully intercalating and deintercalating lithium ions [0032].
Regarding claim 12-14, Du discloses an all-solid state battery comprising a composite membrane comprises a conductive material and a metal powder, however, fails to disclose the amount of the conductive material, the metal powder, and/or binder as presently claimed.
Nakamura teaches an all-solid-state battery comprising a composite membrane comprising conductive material ([0014] carbon particles B through E) and a metal particle capable of alloying with lithium ([0014] particle A that can intercalate and deintercalated lithium ions). Nakamura also teaches that the conductive membrane further comprises a binder ([0090]), wherein the conductive membrane comprises: an amount of about 90 wt% to 99.9 wt.% carbon conductive material (conductive material interpreted to include B, C, D, and E; based on [0040], it is known that the ratio between A and B is 1/100 to 100/100, meaning particle B must be a main component; [0070] C is added in 0.1 to 10 parts by mass relative to 100 parts by mass of particles A and B; [0082] first carbon material E 0.1 to 10 parts by mass relative to 100 parts by mass of particles A and B; [0080] D is 0.5 to 20 parts by mass relative to 100 parts by mass of particles A and B); given these ranges, it would be obvious to someone of ordinary skill in the art that the total amount by weight of the conductive material would overlap with the claimed range of about 90-99.9 wt.%; an amount of about 0.1-45 wt.% of the metal particle ([0040] amount of particles (A) is 1 part by mass to 100 parts by mass based on 100 parts by mass of carbon particles B); and an amount of about 0.1 % by weight to 10 % by weight of the binder ([0090] 0.5 to 100 parts by mass relative to 100 parts by mass of the composite electrode material), based on the total weight of the composite membrane. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Du’s composite membrane to have the composition as claimed, as suggested by Nakamura, in order to obtain high energy density, high initial capacity, and high capacity maintenance ratio [0002].
Response to Arguments
Applicant's arguments filed 7/16/26 have been fully considered but they are not persuasive.
Applicant argues that Du fails to teach the recited “composite membrane”, “first solid electrolyte layer”, and “second solid electrolyte layer” of claim 1. This is because applicant argues that the “composite membrane” of claim 1 is positioned between the “first solid electrolyte layer” and the “second electrolyte layer”. The examiner respectfully disagrees. The claims do not require the composite membrane to be between the first and second electrolyte layer. Rather, the claims require that the first and second solid electrolyte layers are disposed on first and/or second surface of the composite membrane. The claims do not require specific ordering of all the claimed layers as argued by the applicant.
Nevertheless, Du’s composite membrane (026) is between a first solid electrolyte layer (006) and a second solid electrolyte layer (006) (please see annotated Fig. 4D set forth below).
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With regards to applicant arguments that Du requires the presence of the negative electrode current collector (004), applicant argues that this is absent from the recited solid state battery of claim 1. This has been found unpersuasive. The claims are open to include unrecited layers.
Applicant argues that Du fails to teach or suggest the recited “first layer”, second layer”, and “third layer” of claim 1. This is because applicant argues that the claim requires the first and second layers include a conductive material and a metal powder, while the intermediate layer includes the conductive material without metal powder. Applicant’s arguments have been found unpersuasive. The claims are open to include unrecited materials. Thereby, the intermediate layer is open to include metal powder. Therefore, the examiner maintains that each and every sublayer of the composite membrane in Du being of the same material or identical would read upon the broadly claimed composite membrane. Further, there appears to be no distinction between “conductive material” and “metal” powder as it is known in the art that metal is a conductive material.
As to applicant’s arguments directed to dependent claims 4-5, 7, and 11-14 as being patentable due to their dependency to claim 1, the rejection of claim 1 is being maintained. Applicants have not separately argued the patentability of the dependent claims. Thus, claims 4-5, 7, and 11-14 are also being rejected.
For the reasons set forth above, the rejection of Du and Du in view of Nakamura has been deemed proper.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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