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 .
Election/Restrictions
Applicants’ election without traverse of Group I (claims 1-5 and 8-10) in the reply filed on March 25, 2026 is acknowledged.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
In this instance, the abstract recites the phrase that can be implied “The present disclosure relates to…” (in the 1st line), as well as the legal term “comprised” (in the last line).
The use of the terms “Denka black”, “Ketjen black”, “Kynar”, and “Super P”, which are trade names or marks used in commerce, has been noted in this application (see pages 13 and 14 of the substitute specification). The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include proper symbols indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1, 2, and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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.
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 on a surface and inside of the lithium substrate (110) – see page 3 of translation and Figure 2b.
Regarding claim 2, KR ‘357 discloses that the lithium compound (120) includes Li2S (see page 3 of translation).
Regarding claims 8-10, 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).
Claim Rejections - 35 USC § 102/103
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 3-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over KR 20170011357 A.
Regarding claim 3, KR ‘357 discloses that the lithium compound (lithium sulfide (120)) 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, 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).
Conclusion
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 April 21, 2026
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