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 .
Priority
Acknowledgment is made that the instant application was effectively filed on 30 June 2023, but claims priority to Application No. JP 2021-059762, filed on 31 Mar 2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 30 June 2023 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 1-8 are canceled. Claims 9-16 are pending in the application.
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 9-16 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.
Regarding claim 9, the recitation “contains one or more compounds selected from the group consisting of a C-based compound, a Si-based compound, a Sn-based compound and metal lithium or metal lithium” is indefinite because it is unclear whether the group requires metal lithium or it is an optional additive.
For examination purposes, the aforementioned recitation has been interpreted to mean “contains one or more compounds selected from the group consisting of a C-based compound, a Si-based compound, a Sn-based compound, and metal lithium”.
Regarding claim 10, the recitation “a polymer film having…” is indefinite because it is unclear whether the polymer film of claim 10 is the same polymer film recited in claim 9.
For examination purposes, the aforementioned recitation has been interpreted to mean “the polymer film having…”.
Claims 10-16 are rejected as they depend from, and therefore incorporate the claimed subject matter from claims rejected under this statute.
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.
Claims 9, 10, 12, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sawamoto et al. (U.S. Pub. US 2017/0320021), in view of Stokes et al. (U.S. Pub. US 2013/0022876), Choi et al. (U.S. Pub. US 2019/0214622), and Meador et al. (U.S. Pub. US 2019/0058178), as evidenced by Xing (U.S. Pub. US 2019/0027724).
Regarding claim 9, Sawamoto teaches a non-aqueous electrolyte secondary battery (see [0002 and 0057]) comprising:
a positive electrode (LiCoO2 on aluminum, [0086]);
a negative electrode (graphite on copper, [0087]);
a non-aqueous electrolytic solution (see [0089]); and
a separator (polymer-ion-permeable membrane, see [0001 and 0095-0096]),
wherein an active material of the positive electrode is a lithium-containing transition metal oxide represented by general formula LixMyOz, where M is at least one element selected from the group consisting of Ni, Co, Mn, Al, Mg, and Mo, and a composition ratio satisfies 0.8 ≤ x ≤ 1.3, 0.5 ≤ y ≤ 2, and 1 ≤ z ≤ 4 (LiCoO2, [0086]),
an active material of the negative electrode contains one or more compounds selected from the group consisting of a C-based compound, a Si-based compound, a Sn-based compound and metal lithium or metal lithium (graphite, [0087], see 35 U.S.C. § 112(b) rejection above for interpretation).
the non-aqueous electrolytic solution contains two solvents (ethylene carbonate and diethyl carbonate, [0089]), is separated by the separator (see [0088-0089]), and the separator is a polymer film (aromatic polyamide film, see [0095]) having an air permeability of more than 10,000 seconds (Example 1, No Gas Permeability, see Table 1 and [0074]),
but does not teach the non-aqueous electrolytic solution has a composition of the non-aqueous electrolytic solution in contact with a negative electrode side and a composition of the non-aqueous electrolytic solution in contact with a positive electrode side different from each other, and the separator having an ionic conductance of 1 x 10-5 S/cm or more, and a contact angle between at least one surface of the separator and an organic solvent of 90° or more.
While the prior art does not disclose a contact angle between at least one surface of the separator and an organic solvent, this is a material property of the separator which is a result of structure, composition, and processing thereof, as the claimed and prior art products of Sawamoto are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes (see [0094]), a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
Moreover, as evidenced by Xing, contact angle measurement is known in the art to be a common technique for determining the wettability of a separator by the electrolyte, with higher contact angles corresponding to lower wettability (see [0193 and 0202]).
Stokes teaches a microporous polymer membrane providing resistance to wetting by organic solvents (see [0104]) for use in a battery separator (see [0015]). Thus, as evidenced by Xing, Stokes necessarily teaches increasing the contact angle between at least one surface of a separator and an organic solvent.
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the contact angle between at least one surface of a separator and an organic solvent, as taught by Stokes, to improve the compatibility of the polymer substrate with materials and adjoining layers ([0076]).
Sawamoto, in view of Stokes, still does not teach the non-aqueous electrolytic solution has a composition of the non-aqueous electrolytic solution in contact with a negative electrode side and a composition of the non-aqueous electrolytic solution in contact with a positive electrode side different from each other, and the separator having an ionic conductance of 1 x 10-5 S/cm or more.
Further, Choi 622 teaches the non-aqueous electrolytic solution (320, Fig. 6, see [0108]) has a composition of the non-aqueous electrolytic solution in contact with a negative electrode side (310, Fig. 6) and a composition of the non-aqueous electrolytic solution in contact with a positive electrode side different from each other (see [0095]).
Examiner’s Note: It is the position of the Examiner, that the catholyte and anolyte taught by Choi 622 are different in composition, since the invention is taught to prevent swelling form absorption/uptake of an electrolyte (see [0005]), thereby preventing crossover of electrolyte systems.
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the non-aqueous electrolytic solution of Sawamoto, in view of Stokes, such that the positive and negative electrolytic solutions have different compositions, as taught by Choi 622, to increase the performance of a lithium ion battery and facilitate the use of novel materials ([0095]).
Sawamoto, in view of Stokes and Choi 622, still does not teach the separator having an ionic conductance of 1 x 10-5 S/cm or more.
Further, Meador teaches a separator (polyimide-network battery separator, [0071]) having an ionic conductance of 1 x 10-5 S/cm or more (see Table 1, [0117]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the separator of Sawamoto, in view of Stokes and Choi 622, such that it has an ionic conductance of 1 x 10-5 S/cm or more, as taught by Meador, to be suitable for use in efficient lithium batteries ([0032]).
Regarding claim 10, Sawamoto, in view of Stokes, Choi 622, and Meador, teaches wherein the separator is a polymer film having (see 35 U.S.C. § 112(b) rejection for interpretation) an air permeability of more than 10,000 seconds, an ionic conductance of 1 x 10-5 S/cm or more, and a contact angle between at least one surface of the separator and a propylene carbonate liquid of 90° or more and a contact angle between at least one surface of the separator and a 1,2-dimethoxyethane liquid of 90° or more.
While the prior art does not disclose a contact angle between at least one surface of the separator and propylene carbonate or 1,2-dimethoxyethane, this is a material property of the separator which is a result of structure, composition, and processing thereof, as the claimed and prior art products of Sawamoto are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes (see [0094]), a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
Moreover, Sawamoto, in view of Stokes, Choi 622, and Meador, teaches increasing the contact angle between at least one surface of a separator and an organic solvent (see rejection of claim 9).
Further, Choi 622 teaches propylene carbonate and dimethoxyethane as organic solvents contacting a membrane (310, Fig. 6 see [0108 and 0151]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the organic solvents with a contact angle of 90° or more of Sawamoto, in view of Stokes, Choi 622, and Meador, to be propylene carbonate and 1,2-dimethoxyethane, to allow for the use of a known electrolyte system ([0151]).
Regarding claim 12, Sawamoto, in view of Stokes, Choi 622, and Meador, does not teach a change ratio of a contact angle between an organic solvent and the polymer film after 1 hour is less than 10%.
While the prior art does not disclose a change ratio of a contact angle between at least one surface of the polymer film and an organic solvent after 1 hour, this is a material property of the separator which is a result of structure, composition, and processing thereof, as the claimed and prior art products of Sawamoto are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes (see [0094]), a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
Regarding claim 13, Sawamoto, in view of Stokes, Choi 622, and Meador, does not teach wherein change ratios of contact angle between the polymer film and a propylene carbonate liquid after 1 hour and a contact angle between the polymer film and a 1,2-dimethoxyethane liquid after 1 hour are less than 10%.
While the prior art does not disclose a change ratio of a contact angle between at least one surface of the separator and propylene carbonate or 1,2-dimethoxyethane after 1 hour, this is a material property of the separator which is a result of structure, composition, and processing thereof, as the claimed and prior art products of Sawamoto are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes (see [0094]), a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
Regarding claim 16, Sawamoto, in view of Stokes, Choi 622, and Meador, teaches wherein the polymer film contains at least one polymer selected from the group consisting of an aromatic polyamide (Example 1, aromatic polyamide, see Table 1), an aromatic polyimide, and an aromatic polyamide-imide.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sawamoto et al. (U.S. Pub. US 2017/0320021), in view of Stokes et al. (U.S. Pub. US 2013/0022876), Choi et al. (U.S. Pub. US 2019/0214622), and Meador et al. (U.S. Pub. US 2019/0058178), as evidenced by Xing (U.S. Pub. US 2019/0027724), and further in view of Choi et al. (J. Electrochem. Sci. Technol. 6 2, 35-49, 2015).
Regarding claim 11, Sawamoto, in view of Stokes, Choi 622, and Meador, teaches wherein the non-aqueous electrolytic solution contains solvents (ethylene carbonate and diethyl carbonate, [0089]) and an electrolyte (LiPF6, [0089]),
but does not teach a HOMO energy of the solvent of the non-aqueous electrolytic solution in contact with the positive electrode side is -11.5 eV or less, and a LUMO energy of the solvent of the non-aqueous electrolytic solution in contact with the negative electrode side is 2.0 eV or more.
However, Choi (Electrochem) teaches a HOMO energy of the solvent (ethylene carbonate, Page3:C1:L1-3) of the non-aqueous electrolytic solution in contact with the positive electrode side is -11.5 eV or less (~-12 eV, EC HOMO, Fig. 3), and a LUMO energy of the solvent of the non-aqueous electrolytic solution in contact with the negative electrode side is 2.0 eV or more (~5 eV, EC LUMO, Fig. 3, see Page2:C2:L29-32).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the solvent system of Sawamoto, in view of Stokes, Choi 622, and Meador, such that the positive electrolytic solution has a HOMO energy less than 11.5 eV and the negative electrolytic solution has a LUMO energy greater than 2 eV, as taught by Choi (Electrochem), to maintain stability of compounds in cathodic and anodic environments (see Page3:C1:L1-16).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Sawamoto et al. (U.S. Pub. US 2017/0320021), in view of Stokes et al. (U.S. Pub. US 2013/0022876), Choi et al. (U.S. Pub. US 2019/0214622), and Meador et al. (U.S. Pub. US 2019/0058178), as evidenced by Xing (U.S. Pub. US 2019/0027724), and further in view of Inoue et al. (U.S. Pub. US 2018/0358649).
Regarding claim 14, Sawamoto, in view of Stokes, Choi 622, and Meador, does not teach wherein the polymer film has an areal thermal shrinkage of 10% or less after heat treatment at 180°C for 60 minutes.
However, Inoue teaches a polymer film (25, Fig. 3) has an areal thermal shrinkage of 10% or less (0%, see [0043]) after heat treatment at 180°C for 60 minutes (see [0032 and 0043]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the polymer film of Sawamoto, in view of Stokes, Choi 622, and Meador, such that it has an areal shrinkage value less than 10% after heat treatment at 180°C for 60 minutes, to prevent short circuiting at high temperatures (see [0036]).
Regarding claim 15, Sawamoto, in view of Stokes, Choi 622, and Meador, does not teach wherein the polymer film has a meltdown temperature of 300°C or more.
However, Inoue teaches a polymer film (25, Fig. 3) has a meltdown temperature of 300°C or more (thermal decomposition at 400°C, see [0043]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the polymer film of Sawamoto, in view of Stokes, Choi 622, and Meador, such that it has a meltdown temperature of 300°C or more, to prevent short circuiting at high temperatures (see [0035]).
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 9, 10, 12, 13, 15, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 9-12 of copending Application No. 18/551,828 [hereinafter ‘828], in view of Choi et al. (U.S. Pub. US 2019/0214622).
Regarding claim 9, ‘828 teaches a secondary battery comprising:
a positive electrode;
a negative electrode;
a non-aqueous electrolytic solution; and
a separator,
wherein an active material of the negative electrode contains one or more compounds selected from the group consisting of a C-based compound, a Si-based compound, a Sn-based compound and metal lithium or metal lithium, and
the separator is a polymer film having an air permeability of more than 10,000 seconds, an ionic conductance of 1 x10-5 S/cm or more (claim 7 of ‘828),
and a contact angle between at least one surface of the separator and an organic solvent of 90° or more (claim 9 of ‘828),
but does not teach wherein an active material of the positive electrode is a lithium-containing transition metal oxide represented by general formula LixMyOz, where M is at least one element selected from the group consisting of Ni, Co, Mn, Al, Mg, and Mo, and a composition ratio satisfies 0.8 ≤ x ≤ 1.3, 0.5 ≤ y ≤ 2, and 1 ≤ z ≤ 4, the non-aqueous electrolytic solution contains two solvents, is separated by the separator, and has a composition of the non-aqueous electrolytic solution in contact with a negative electrode side and a composition of the non-aqueous electrolytic solution in contact with a positive electrode side different from each other.
However, Choi 622 teaches wherein an active material of the positive electrode is a lithium-containing transition metal oxide represented by general formula LixMyOz, where M is at least one element selected from the group consisting of Ni, Co, Mn, Al, Mg, and Mo, and a composition ratio satisfies 0.8 ≤ x ≤ 1.3, 0.5 ≤ y ≤ 2, and 1 ≤ z ≤ 4 (LiCoO2, [0141]), the non-aqueous electrolytic solution (see [0108]) contains two solvents (see [0151]), is separated by the separator (64, Fig. 8), and has a composition of the non-aqueous electrolytic solution in contact with a negative electrode side and a composition of the non-aqueous electrolytic solution in contact with a positive electrode side different from each other (see [0095]).
Examiner’s Note: It is the position of the Examiner, that the catholyte and anolyte taught by Choi 622 are different in composition, since the invention is taught to prevent swelling form absorption/uptake of an electrolyte (see [0005]), thereby preventing crossover of electrolyte systems.
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the positive electrode of ’828 such that the active material was LiCoO2, as taught by Choi 622, to enable reversible intercalation of lithium (see [0140]).
Further, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the non-aqueous electrolytic solution of Sawamoto such that the positive and negative electrolytic solutions have different compositions, as taught by Choi 622, to increase the performance of a lithium ion battery and facilitate the use of novel materials ([0095]).
Regarding claim 10, ‘828 teaches wherein the separator is a polymer film having an air permeability of more than 10,000 seconds, an ionic conductance of 1 x10-5 S/cm or more (claim 7 of ‘828),
but does not teach a contact angle between at least one surface of the separator and a propylene carbonate liquid of 90° or more and a contact angle between at least one surface of the separator and a 1,2-dimethoxyethane liquid of 90° or more.
However, ‘828 teaches a contact angle between at least one surface of the separator and a dimethyl carbonate liquid of 90° or more (claim 9 of ‘828).
Further, Choi 622 teaches dimethyl carbonate as a functional equivalent of propylene carbonate or dimethoxyethane as solvents for a lithium-ion battery (see [0151]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the separator of ‘828 such that it has a contact angle greater than 90° with propylene carbonate and 1,2-dimethoxyethane, to allow for the use of a functionally equivalent electrolyte system ([0151]).
Regarding claim 12, ‘828 teaches wherein a change ratio of a contact angle between an organic solvent and the polymer film after 1 hour is less than 10% (claim 10 of ‘828).
Regarding claim 13, ‘828 does not teach wherein change ratios of contact angle between the polymer film and a propylene carbonate liquid after 1 hour and a contact angle between the polymer film and a 1,2-dimethoxyethane liquid after 1 hour are less than 10%.
However, ‘828 teaches wherein a change ratio of a contact angle between a dimethyl carbonate liquid and the polymer film after 1 hour is less than 10% (claim 10 of ‘828),
Further, Choi 622 teaches dimethyl carbonate as a functional equivalent of propylene carbonate or dimethoxyethane as solvents for a lithium-ion battery (see [0151]).
Therefore, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the separator of ‘828 such that it has a change ratio of a contact angle with propylene carbonate and 1,2-dimethoxyethane less than 10% after 1 hour, to allow for the use of a functionally equivalent electrolyte system ([0151] of Choi 622).
Regarding claim 15, ‘828, teaches wherein the polymer film has a meltdown temperature of 300°C or more (claim 11 of ‘828).
Regarding claim 16, ‘828 teaches wherein the polymer film contains at least one polymer selected from the group consisting of an aromatic polyamide, an aromatic polyimide, and an aromatic polyamide-imide (claim 12 of ‘828).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/AIDAN LACHLAN PAPANDRIA/Examiner, Art Unit 1723 /TIFFANY LEGETTE/Supervisory Patent Examiner, Art Unit 1723