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 .
Summary
This is the second Office Action based on Application 18/240,811and is in response to Applicant Arguments/Remarks filed 07/07/2026.
Claims 1-17 are previously pending, of those claims 1-11, 13, 15-17 have been amended, and claims 12 and 14 have been canceled. Claims 11, 13, and 15-17 are currently pending and have been fully considered.
Claim Objections
Claim 1 objected to because of the following informalities: The last line of claim 1 recites “… alkaline earth metals/”. This slash is taken to be a typo. Appropriate correction is required.
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) 1-3, 7-8, 10-11, and 13 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by PARK (KR 20210115319 A).
With respect to claims 1-3, 7-8. PARK teaches a lithium sulfur secondary battery (paragraph 0005). The battery includes a positive electrode, negative electrode and a separator (paragraph 0039). The positive electrode may include S8 (paragraph 0087). The negative electrode material may include a lithium alloy (paragraph 0097). The metal of the alloy may include strontium (paragraph 0097).
With respect to claim 10. PARK teaches that the negative electrode active material may be in the form of a thin film (paragraph 0097).
With respect to claim 11. PARK teaches both a cathode current collector (paragraph 0094) and a negative current collector (paragraph 0096).
With respect to claim 13. PARK teaches the electrolyte may include an electrolyte comprising an ether based solvent, including a linear and cyclic ether (paragraph 0048). The ratio of the linear and cyclic ether is 3:1 to 8:1 (paragraph 0077).
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.
Claim(s) 1-11, 13, and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZAGHIB (US 2020/0365887 A1) in view of LEE (US 2021/0167385 A1).
With respect to claims 1-3 and 13. ZAGHIB teaches an electrode material including metallic lithium and at least two additional metallic components X1 and X2 (paragraph 0041). These components X1 and X2 may include Mg and Sr (Table 1).
ZAGHIB teaches battery cells using the negative electrode (paragraphs 0108-0122). ZAGHIB does not explicitly teach a separate separator and separate positive electrode material containing sulfur.
LEE teaches a lithium sulfur battery (paragraph 0047). The battery includes a negative electrode of a lithium alloy (paragraph 0049). There is a separator disposed between the negative and positive electrodes (paragraph 0051). Electrolytes may be used and include a lithium salt and a solvent (paragraph 0053). The solvents may include a mixture of two solvents (paragraph 0054). The solvents may include cyclic ether and acyclic ether solvents (paragraph 0054). The specific ratio of the two may be achieved as a matter of routine experimentation.
At the time the invention was filed one having ordinary skill in the art would have been motivated to use the lithium alloy negative electrode in the lithium sulfur battery of LEE as this is a combination of known prior art elements in order to achieve predictable results.
With respect to claim 4 and 6-9. In one example there may be a binary Li-Mg alloy with lithium present in 90% by weight and mg in 10% by weight (paragraph 0094-0095).
With respect to claim 5. ZAGHIB teaches the amount of lithium compared to the metallic component may be 65-99.8 % by weight (paragraph 0057). Therefore this is taken to include an overlapping range with the claimed amount of 0.1 mol% to 1.3 mol%. See MPEP 2144.05(I). 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).
With respect to claim 10. ZAGHIB teaches the binary Li-Mg alloy is formed into a foil (paragraph 0097).
With respect to claim 11. ZAGHIB teaches the lithium alloy is supported on a current collector (paragraph 0109).
With respect to claim 15. LEE teaches a highly improved capacity (paragraph 0023). Therefore it would have been obvious to have the retention capacity rate of more than 95% would have been obvious at the time the invention was filed, as this would be achieved as a matter of routine optimization for one of ordinary skill in the art in order to maximize the capacity.
With respect to claims 16-17. ZAGHIB teaches melting lithium, magnesium is added, and the allow temperature is increased to 300 degrees C for 30 minutes to dissolve the magnesium and allow the homogenization of the liquid mixture (paragraph 0096). This is then cooled to room temperature (paragraph 0096). This is then taken to form a billet (paragraph 0097) which is taken to be analogous to the claimed ingot. The billet is then thinned to form the desired thickness (paragraph 0048 and 0097).
Claim(s) 4 -6, 9, and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over PARK (KR 20210115319 A) in view of ZAGHIB (US 2020/0365887 A1).
Claims 4, 6, and 9 are dependent upon claim 1 which is rejected above under 35 U.S.C. 102 in view of PARK. PARK teaches the negative electrode includes a lithium alloy (paragraph 0097). PARK does not explicitly teach the weight ratio of the Li and M.
ZAGHIB teaches an electrode material which includes a lithium and metal alloy (paragraph 0041). In one example the lithium alloy may be a binary Li-Mg alloy with lithium present in 90% by weight and Mg in 10% by weight (paragraphs 0094-0095).
At the time the invention was filed one having ordinary skill in the art would have been motivated to substitute the lithium metal alloy active material of PARK with that of ZAGHIB as this is a simple substitution of one known prior art element for another in order to achieve predictable results.
Further with respect to claim 5. The rejection of claim 4 from above is repeated here. ZAGHIB teaches the amount of lithium compared to the metallic component may be 65-99.8 % by weight (paragraph 0057). Therefore this is taken to include an overlapping range with the claimed amount of 0.1 mol% to 1.3 mol%. See MPEP 2144.05(I). 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).
Claim 16 is dependent upon claim 1, and claim 17 is dependent upon claim 16, which is rejected above under 35 U.S.C. 102 in view of PARK. PARK does not explicitly teach the method of preparing the secondary battery.
ZAGHIB teaches melting lithium, magnesium is added, and the allow temperature is increased to 300 degrees C for 30 minutes to dissolve the magnesium and allow the homogenization of the liquid mixture (paragraph 0096). This is then cooled to room temperature (paragraph 0096). This is then taken to form a billet (paragraph 0097) which is taken to be analogous to the claimed ingot. The billet is then thinned to form the desired thickness (paragraph 0048 and 0097).
At the time the invention was filed one having ordinary skill in the art would have been motivated to form the secondary battery as taught by ZAGHIB as this is a combination of known prior art elements in order to achieve predictable results.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over PARK (KR 20210115319 A) in view of LEE (US 2022/0167385 A1).
Claim 15 is dependent upon claim 1 which is rejected above under 35 U.S.C. 102 in view of PARK. PARK does not teach the retention capacity of the secondary battery.
LEE teaches a lithium sulfur battery (paragraph 0047). The battery includes a negative electrode of a lithium alloy (paragraph 0049). LEE teaches a highly improved capacity (paragraph 0023). Therefore it would have been obvious to have the retention capacity rate of more than 95% would have been obvious at the time the invention was filed, as this would be achieved as a matter of routine optimization for one of ordinary skill in the art in order to maximize the capacity.
Therefore the combination of the lithium sulfur battery with that of LEE would teach the lithium sulfur battery with a capacity retention of greater than 95%.
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 1-11, 13, and 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/240,718 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because application ‘718 claims a negative electrode for a lithium secondary battery comprising a lithium magnesium-aluminum alloy (claim 1). Magnesium taken to be the claimed alkaline earth metal.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 07/07/2026 have been fully considered but they are not persuasive.
On pages 6-10 of Applicant Arguments/Remarks, Applicant argues against the 35 U.S.C. 102 rejection of claims 1-4, 6-11, and 16-17 in view of ZAGHIB, and the 103 rejection of claims 12-14 further in view of LEE. On page 7 of Applicant Arguments/Remarks Applicant argues improper hindsight reconstruction. This argument is not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
On page 9 Applicant argus that lithium sulfur batteries involve complex interactions between lithium metal and polysulfide species, and the use of such elements would have not have been predictable. This argument is not persuasive, as one of ordinary skill in the art would be able to apply the active material of ZAGHIB to a lithium sulfur battery. Specifically ZAGHIB teaches that the electrode material can be used in lithium-sulfur batteries (paragraph 0085). So the motivation for using the active material of ZAGHIB in a lithium sulfur battery is not hindsight reasoning, as ZAGHIB explicitly teaches that this is possible. Applicant argues on page 9 that even though ZAGHIB teaches that it may be used in lithium sulfur batteries, this cannot establish obviousness as such statements are not enabling. This argument is not persuasive, as one of ordinary skill in the art would be able to do such modifications, and further the rejection is in view of ZAGHIB and LEE, and so the combination of references would teach this element. Therefore this argument is not persuasive.
In addition in order to advance prosecution the reference of PARK (KR 20210115319 A) which was cited on the IDS filed 07/08/2026 is applied to show that the present claim limitations are anticipated by the prior art in view of the amendments.
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 JONATHAN G JELSMA whose telephone number is (571)270-5127. The examiner can normally be reached Monday through Friday 9:00 AM to 4:00 PM EST.
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/JONATHAN G JELSMA/Primary Examiner, Art Unit 1722
