Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 24-43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 24, 42, and 43 as presented in the preliminary amendment filed 10/3/23 each recite a multilayer structure for a lithium battery comprising a first separator/electrode stack and a second separator/electrode stack, the electrodes in each stack having the same polarity and the second stack comprising two electrodes of opposite polarity to the electrodes in the first stack. It is submitted that this combination of features was not sufficiently disclosed in the application as originally filed so as to convey possession of the claimed invention to one skilled in the art. Throughout the disclosure, the “separator/electrode stack” is shown and described as a five-layer structure containing two separators, two electrodes of the same polarity, and a current collector (see, e.g., Fig. 2, stack is element “10”). In addition, throughout the disclosure, stack “10” is disclosed as being alternated with electrode “20” in a multilayer structure, which contains two electrode layers and a current collector (see, e.g., Fig. 3). There is no contemplation or disclosure of a multilayer structure which contains two 5-layer stacks immediately adjacent each other as recited in/encompassed by claims 1, 42, and 43. Accordingly, the claims contain new matter.
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 24-43 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. The use of the term “portion” as it refers to the first and second separators in the claims is not completely understood and raises a lack of clarity. The claims recite “a first portion of the first porous separator” and “a second portion of the first porous separator,” and analogous language with respect to the second porous separator. As is apparent throughout the disclosure, the first and second portions of the separator are actually different physical structures. However, the claims encompass the same physical separator having first and second portions having the recited layers thereon (for example, first and second sides of the same separator, different areas on one side of the separator, etc.). This leads to a lack of clarity as what the “portions” of the separator actually are and what physical structure is being claimed. Correction is required.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 24, 25, 27, 29-33, 42, and 43 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Lee et al (US 20030104273). Regarding claims 24, 42 and 43, the reference is directed to a multilayer structure for a lithium battery comprising a first electrode layer (13) of a first (negative) polarity directly on a first portion (lowermost “19” in Fig. 3) of a first porous separator, a second electrode layer (also 13, below first “13”) of the same (negative) polarity directly on a second portion (15) of the first porous separator, and a current collector (11) directly contacting both electrode layers, to form a first separator/electrode stack. The multilayer structure comprises a second porous separator (lowermost “19”) that is the same as the first porous separator. A third electrode layer (14) of the opposite (positive) polarity is directly on a third portion (19) of the second porous separator, a fourth electrode layer (also 14, above first “14”) of the opposite (positive) polarity is directly on a second portion (15) of the second porous separator, and a current collector (12) directly contacts both third and fourth electrode layers, to form a second separator/electrode stack. Regarding claims 25 and 27, the current collectors are metal layers ([0054]). Regarding claim 29, the first and second electrode layers are anode layers and the third and fourth electrode layers are cathode layers. Regarding claims 30 and 31, the anode current collector comprises copper and the cathode current collector comprises aluminum (see [0054], Example 1). Regarding claims 32 and 33, as well as the last clauses in each of independent claims 42 and 43, these limitations recite that the electrode layers are coated directly on the separator from a pigment dispersion comprising an organic solvent or water. The limitations are directed to a method of making the claimed product, and hence are treated as product-by-process limitations. The position is taken that the limitations are met by the reference because the structure of the multilayer structure of the claims is not distinguishable from the structure of the multilayer structure of Lee et al. Stated differently, the patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the prior art process (laminating of layers) does not produce a structure unobviously different from direct coating. Furthermore, once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See also MPEP §2113. Accordingly, the instant claims are anticipated.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 26, 28, 36, and 37 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee et al.
The reference is applied to claims 24, 25, 27, 29-33, 42, and 43 for the reasons stated above. However, the reference does not expressly teach the thicknesses recited in claims 26, 28, 36, and 37 (metal layers less than 3 microns, first porous separator less than 9 microns).
However, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the artisan would have generally been motivated to make the non-active components of the battery as thin as possible, while balancing the need for overall structural integrity and the ability to perform the function required of the component. It has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980). Further, the position is taken that the layer thickness (including active material layers, which are not claimed) is representative of the overall size of the battery which can be scaled up and down according to the needs of the skilled artisan. For example, micro-sized or thin-film batteries, which use very thin layers, are well-known in the art. For this additional reason, the claimed ranges are considered to be obvious.
Claims 38-41 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee et al. in view of Carlson (US 6488721).
Lee et al. is applied to claims 24, 25, 27, 29-33, 42, and 43 for the reasons stated above. However, Lee does not expressly teach that the first and second porous separators comprise aluminum boehmite (claims 38 and 39) or that the separator is heat resistant with dimensional stability at 200C (claims 40 and 41).
Carlson is directed to electrode/separator assemblies. The separator comprises a layer of aluminum boehmite xerogel (col. 14, line 9).
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the artisan would be motivated to use the aluminum boehmite separator of Carlson in the multilayer structure of Lee et al. In column 15, Carlson discusses the advantages of such a separator, including the blocking of particles that could migrate (functioning as an ultrafiltration membrane), and the strong capillary action that retains liquids. Accordingly, the artisan would be motivated to use the aluminum boehmite separator of Carlson in the multilayer structure of Lee et al. Further regarding claims 40 and 41, such a separator would inherently be heat resistant and dimensionally stable at 200C.
Claims 34 and 35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee et al. in view of Yong et al (US 20060046149).
Lee et al. is applied to claims 24, 25, 27, 29-33, 42, and 43 for the reasons stated above. However, the reference does not expressly teach that the first and second porous separators comprise inorganic oxide particles in an amount greater than 30% by weight.
Yong et al. is directed to a composite organic-inorganic separator. The separator comprises inorganic particles (oxide particles) in an amount of 50-99 wt% ([0035], [0036], [0041]).
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the artisan would be motivated to use the separator of Yong in the multilayer structure of Lee. In [0018], Yong teaches that the object of the invention is to provide an organic/inorganic composite porous film capable of improving the quality and safety of an electrochemical device. Accordingly, the artisan would be motivated to use the separator of Yong in the multilayer structure of Lee.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Nicole Buie-Hatcher, can be reached at (571) 270-3879. The phone number for the organization where this application or proceeding is assigned is (571) 272-1700. Documents may be faxed to the central fax server at (571) 273-8300.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
June 18, 2026
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