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 .
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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, 3-5, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20170011357 A, of which a copy of the Korean document with an English abstract was provided with the Information Disclosure Statement dated July 5, 2023, and with a machine translation provided with the restriction requirement mailed January 27, 2026, and further in view of WO 2021/172879 A1, of which a copy of the document with an English abstract was provided with the Information Disclosure Statement dated July 5, 2023, and with a machine translation provided with this Office Action.
Regarding independent claim 1, KR ‘357 discloses a negative electrode for a lithium secondary battery (abstract; pages 2-6 of the translation under DESCRIPTION-OF-EMBODIMENTS); and Figure 2b), in which the negative electrode includes the following structural features:
a lithium substrate (lithium metal base (110)) – see page 3 of translation and Figure 2b; and
a lithium compound (lithium sulfide (120)) formed inside of the lithium substrate (110) – see page 3 of translation and Figure 2b.
KR ‘357 fails to teach the new limitation that the lithium compound comprises at least one selected from LiNO3, LiF, LiCl, Li2CO3, and Li2O (absent of Li2S from cancelled claim 2).
However, WO ‘879 discloses a lithium metal-based negative electrode (see abstract; and pages 4 and 5 of translation under the heading DISCLOSURE TECH-PROBLEM), in which the lithium metal-based negative electrode includes a lithium nitride on the surface of the lithium substrate, in order to provide a protection layer on at least one surface of the lithium metal layer (see abstract).
Therefore, it would have been obvious to one of ordinary skill in the art to apply a lithium compound or any variant related to lithium nitride of the lithium metal-based negative electrode, as taught by WO ‘879, onto the surface of the lithium substrate to replace the lithium sulfide disclosed by KR ‘357, in order to provide a protection layer on at least one surface of the lithium metal layer (WO ‘879; abstract; and pages 4 and 5 of translation under the heading DISCLOSURE TECH-PROBLEM). With regard to the types of lithium-containing materials that are suitable for use, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 3, and in addition to the combined teachings of KR ‘357 and WO ‘879 disclosing/suggesting the limitations of independent claim 1, KR ‘357 discloses that the lithium compound is contained in an amount between 1% to 50% by volume based on the total volume of the lithium electrode (see the paragraph bridging pages 2 and 3 of translation), wherein 1% to 50% by volume has substantial overlap with an amount between 0% and 30% by weight (see page 3 of translation). In this instance, one of ordinary skill in the art would have recognized that optimization of the ranges of % by volume and % by weight would be advantageous for enhancing the effect of preventing lithium dendrites, thereby improving stability of the lithium secondary battery (see abstract of KR ‘357). With regard to the ranges of % by volume and % by weight of the lithium compound based on the total volume and the total weight of the lithium electrode, respectively, these ranges would be anticipated and/or obvious since these ranges would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the ranges of % by volume and % by weight in view of KR ‘357, as set forth in MPEP 2144.05. “In the case where 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). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 4 and 5, and in addition to the combined teachings of KR ‘357 and WO ‘879 disclosing/suggesting the limitations of independent claim 1, KR ‘357 discloses that the lithium substrate (110) would be thin as to optionally be in the form of a lithium foil (2), as shown in Figure 1 (see page 1 of translation under BACKGROUND-ART), wherein the lithium substrate (110) has a thickness of 1µm to 100 µm, which overlaps a large portion of the claimed range of 5µm to 500 µm. In this instance, one of ordinary skill in the art would have recognized that optimization of the range of thickness of the lithium substrate would be advantageous for enhancing the effect of preventing lithium dendrites, thereby improving stability of the lithium secondary battery (see abstract of KR ‘357). With regard to the range of thickness of the lithium substrate, this range would be anticipated and/or obvious since this range would be readily contemplated by one of ordinary skill in the art. In this instance, one of ordinary skill in the art would have recognized the obviousness of the range of thickness in view of KR ‘357, as set forth in MPEP 2144.05. “In the case where 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). Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claims 8-10, and in addition to the combined teachings of KR ‘357 and WO ‘879 disclosing/suggesting the limitations of independent claim 1, KR ‘357 discloses a lithium secondary battery (200) that includes a positive electrode (cathode (220)) that includes sulfur, the negative electrode (anode (210)) of claim 1, a separator (230), and an electrolyte solution, wherein the lithium secondary battery (200) is a lithium-sulfur secondary battery (see the last full paragraph on page 3 of translation; and Figure 4).
Response to Arguments
The examiner acknowledges the applicants’ amendment received by the USPTO on July 29, 2026. The amendment overcomes the prior objections to the abstract and specification. Although the applicants’ amendments to independent claim 1 overcome the prior 35 USC 102(a)(1) and 35 USC 102/103 rejections set forth in the non-final Office Action mailed April 30, 2026, a new 35 USC 103 rejection is provided for all claims of record in view of the new reference to Jung et al. (WO 2021/172879 A1). Claims 6 and 7 remain withdrawn from consideration as drawn to a non-elected invention. The applicants have cancelled claim 2. Claims 1, 3-5, and 8-10 are currently under consideration in the application.
Applicants’ arguments with respect to claims 1, 3-5, and 8-10 have been considered but are moot because the new ground of rejection includes a new secondary reference to Jung et al. (WO 2021/172879 A1), as also provided in the newly underlined portions of the above 35 USC 103 rejection, and thus does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicants' 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 KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 August 19, 2026
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