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/Restriction
Applicant’s election of Group I, claim(s) 1–10, in the reply filed on 07/10/26 is acknowledged. Claim(s) 11–20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
This application contains claims directed to the following patentably distinct species:
Species 1 and 2: Methods of Incorporating CEI Additive into Cathode
Species 1: CEI incorporated by mixing with cathode active material slurry (spec., ¶ 0032)
Species 2: CEI incorporated by applying CEI additive onto cathode active material layer (spec., ¶ 0033)
Species 2A–2C: Methods of Applying CEI Additive onto Cathode Active Layer
Species 2A: ball milling onto cathode active material layer (¶ 0033)
Species 2B: spray coating onto cathode active material layer (¶ 0033)
Species C: drying cathode in oven, calendering cathode, and dipping cathode in bath including CEI additive and solvent (¶ 0033)
The species are independent or distinct because they recite mutually exclusive methods of incorporating the CEI additive, which is corroborated by the specification’s envisioning these species as separate embodiments (¶ 0032, 0033). In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claims appear generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
In electing original Group I (claims 1–10), Applicant has constructively elected new Species I (incorporating CEI additive by mixing with cathode active slurry). Claims 11–17 (as part of claims 11–20)—which reflect Species 2—are withdrawn as being directed to a separate embodiment given that the specification does not appear to support a joint embodiment of both mixing the CEI additive with the cathode active slurry and then applying the CEI additive onto the cathode active material layer (see spec.’s ¶ 0032 versus 0033, where applying the CEI onto the cathode active layer is clearly envisioned as occurring “In other examples” besides mixing with the cathode active slurry). NOTE: were withdrawn claims 11–17 eventually rejoined upon finding claim 1 allowable, such would appear to constitute new matter under 35 U.S.C. 112(a).
Applicant traverses first on the ground that (original) Inventions I and III share overlapping subject matter. Examiner respectfully disagrees because independent claims 1 and 18 include different scope via different statutory class (method versus product) and different scope (unbounded CEI additive in claim 1 versus CEI additive comprising LiPO2F2 in claim 18; note also that claim 18 requires two solvents, whereas claim 1 only requires one). As established in the restriction, the inventions are distinct at least because claim 1’s process can be practiced with another CEI additive such as LiPF6, and Applicant has not appeared to rebut this assertion, making the traversal unpersuasive.
Applicant further traverses on the ground that Inventions I and II (now reflected by Species 1 and 2) are indistinct because claim 11 now depends from claim 1, and Applicant asserts that Invention II (reflected by claims 1–17) is now within the same embodiment as Invention I given figs. 3–5 and the specification’s ¶ 0043, 0045, and 0046 support the joint embodiment.
Examiner respectfully disagrees at least because all method steps of figs. 3–5 are blank, making it unclear what embodiment(s) Applicant is referencing. Further, the cited paragraphs do not appear to support a combined embodiment (each paragraph appears to only support that the electrolyte optionally includes the CEI additive but does not seem to support separately applying the CEI after forming the active layer) and, thus, not supporting the assertion that claims 11–17 are patentably indistinct.
Therefore, because the traversal is unpersuasive, claims 11–20 remain withdrawn. Moreover, Applicant’s amendment necessitated the alteration from groups to species in the restriction requirement. Thus, this restriction is made FINAL.
Drawings
The drawings are objected to because all method steps in the processes illustrated by figs. 3–5 are blank. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shu et al. (CN 112151807 A, with mach. translation) (Shu).
Regarding claims 1 and 2, Shu discloses a method for manufacturing a cathode electrode of a battery cell (Ex. 6 (¶ 0069) prepared according to Ex. 3, ¶ 0051–0054), comprising mixing a cathode active material (lithium cobalt oxide, ¶ 0051), a conductive filler (carbon black, Id.), a binder (PVDF, Id.), a solvent (NMP, ¶ 0053), and a CEI-enhancing additive (Li3PO4, ¶ 0069; see, e.g., ¶ 0024 (as well as instant claim 2) to note that Li3PO4 is a CEI-enhancing additive) to form a slurry mixture (¶ 0053); and casting the slurry mixture onto a cathode current collector to form a cathode active material layer of the cathode electrode (coating onto Al foil to form positive electrode sheet, ¶ 0054).
Claim(s) 1 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shu et al. (CN 112151807 A) (Shu).
NOTE: the following rejection is based on a separate embodiment of Shu.
Regarding claim 1, Shu discloses a method for manufacturing a cathode electrode of a battery cell (Ex. 1, ¶ 0037–0040), comprising mixing a cathode active material (lithium cobalt oxide, ¶ 0037), a conductive filler (carbon black, Id.), a binder (PVDF, Id.), a solvent (NMP, ¶ 0039), and a CEI-enhancing additive (LiPO3, ¶ 0037; see, e.g., ¶ 0024 to note that LiPO3 forms a stable solid-electrolyte interphase (SEI) atop the cathode and, thus, is a CEI-enhancing additive) to form a slurry mixture (¶ 0039); and casting the slurry mixture onto a cathode current collector to form a cathode active material layer of the cathode electrode (coating onto Al foil to form positive electrode sheet, ¶ 0040).
Regarding claim 9, Shu discloses the method of claim 1, wherein the CEI-enhancing additive comprises 0.5 wt% (¶ 0037), falling within 0.25–5 wt%, and the cathode active material comprises 95 wt% (¶ 0037), falling within 95–99.75 wt%.
Claim(s) 1–3 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kikuchi (US 20180358614 A1).
Regarding claims 1–3 and 8, Kikuchi discloses a method for manufacturing a cathode electrode for a battery cell (e.g., Ex. 6 (Table 2), prepared according to Ex. 1, ¶ 0114), comprising mixing a cathode active material (LiNi1/3Co1/3Mn1/3O2, ¶ 0114, further reading on lithium nickel manganese cobalt oxide (NMC) of claim 8), a conductive filler (acetylene black, Id.), a binder (PVDF, Id.), a solvent (NMP dispersion medium, Id.), and a CEI-enhancing additive (LiPO2F2 additive, Table 2, Ex. 6; see also, e.g., ¶ 0038 (as well as instant claims 2 and 3) to note that LiPO2F2 is a CEI-enhancing additive) to form a slurry mixture (¶ 0114); and casting the slurry mixture onto a cathode current collector to form a cathode active material layer of the cathode electrode (coating onto Al foil to form positive electrode, ¶ 0114).
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.
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.
Claim(s) 4–7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kikuchi (US 20180358614 A1), as applied to claim 1, in view of Wang et al. (US 9331331 B1) (Wang).
Regarding claim 4, Kikuchi discloses the method of claim 1.
Kikuchi discloses that the method further comprises drying the cathode electrode (¶ 0114) but fails to explicitly disclose that such occurs in an oven.
Wang is directed to an analogous method of forming a cathode (e.g., col. 4, lines 5–11), teaching drying the coated cathode in an oven, calendaring, and assembling the electrode into a battery (Id.).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to perform Kikuchi’s drying in an oven, as well as calendar the cathode afterward, with the reasonable expectation of producing a successful cathode for assembling into the battery as known cathode production steps.
Kikuchi further discloses arranging the cathode electrode in a stack (see positioning with separator and negative electrode, ¶ 0117, which, per ¶ 0105, may occur by laminating/stacking the electrode assembly); arranging the stack in a battery cell enclosure (¶ 0117); and adding electrolyte into the battery cell enclosure (¶ 0117).
Regarding claim 5, modified Kikuchi discloses the method of claim 4, wherein the electrolyte comprises a carbonate-based electrolyte (EC and EMC in Kikuchi’s ¶ 0116).
Regarding claim 6, modified Kikuchi discloses the method of claim 4.
Kikuchi exemplifies an electrolyte comprising carbonates EC and EMC in Ex. 6, ¶ 0116, and, thus, fails to explicitly disclose a mixture of FEC and DEC.
More generally, though, Kikuchi discloses that the electrolyte may contain many types of carbonate solvents, including not only EC and EMC but, e.g., FEC and DEC (¶ 0072–0074).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to routinely add or substitute FEC and DEC into Kikuchi’s electrolyte comprising EC and EMC with the reasonable expectation of producing a successful electrolyte.
Regarding claim 7, modified Kikuchi discloses the method of claim 4.
Kikuchi exemplifies an electrolyte comprising a salt of LiPF6 (¶ 0116) and, thus, fails to explicitly disclose that the electrolyte further includes the CEI-enhancing additive.
More generally, however, Kikuchi discloses that the electrolyte may contain several different kinds of salts, including a preferable list with not only LiPF6 but also LiPO2F2 as another F-containing electrolyte salt for further demonstrating the invention’s effect of reducing HF generation by suppressing the salt’s decomposition (¶ 0075, 0076).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to routinely add or substitute LiPO2F2 as the CEI-enhancing additive into Kikuchi’s electrolyte comprising LiPF6 with the reasonable expectation of producing a successful electrolyte with suppressed salt decomposition and HF generation.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kikuchi (US 20180358614 A1), as applied to claim 1.
Regarding claims 9 and 10, Kikuchi discloses the method of claim 1, wherein the CEI-enhancing additive comprises 0.3 wt% (Table 2, Ex. 6), falling within 0.25–5 wt% (claim 9) and 0.25–2 wt% (claim 10).
Kikuchi further exemplifies 94 wt% cathode active material in Ex. 6 (¶ 0114), which is close enough to the instant 95–99.75 wt% (claim 9) and 98–99.75 wt% that one skilled in the art would have reasonably expected substantially similar performance from Kikuchi’s active material as from the instant active material (MPEP 2144.05 (I)). Specifically, the instant specification purports no criticality to either range, and Kikuchi never attributes poor performance to 94 wt% or any other value outside claims 9 and 10’s ranges. Thus, absent demonstrated criticality, the instant 95–99.75 wt% and 98–99.75 wt% appear merely obvious variants of Kikuchi’s 94 wt%.
More importantly, though, the skilled artisan would recognize that enough active material must be present for sufficient capacity and energy density and, thus, constitute the bulk of the mixture (as seen in Kikuchi’s ¶ 0114) but would understand not to include too much active material to detract from the other electrode components’ effects (e.g., conductive filler for improving conductivity, binder for adhering electrode components together and to current collector, LiPO2F2 additive for stable CEI formation to suppress decomposition of F-containing electrolyte on cathode (¶ 0038), and so on). To balance each of these effects, then, it would have been obvious to arrive at the recited ranges by routinely optimizing the active material’s wt% in the mixture (MPEP 2144.05 (II)).
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.
Claim(s) 1 and 8 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 8, 12, and 14 of copending Application 19/414921 (reference application, unpublished) in view of Shu et al. (CN 112151807 A) (Shu). Although the claims at issue are not identical, they are not patentably distinct from each other as follows:
Ref. claims 8, 12, and 14 together encompass instant claims 1 and 8 besides reciting mixing with a conductive filler, a binder, and a solvent.
Shu teaches an analogous method of forming a cathode mixture including lithium phosphate salts for forming a stable solid-electrolyte interphase atop the cathode (e.g., ¶ 0024, 0037–0040). Shu teaches, alongside mixing with the lithium phosphate and active material, mixing with binder, conductive filler, and solvent (e.g., ¶ 0019, 0037–0040). Shu teaches that the conductive filler forms a conductive network between the active material and phosphate additive (¶ 0025); and the binder improves coating strength (¶ 0025). Further, one skilled in the art would recognize that the solvent improves homogenization for uniform slurry mixing (as alluded to in Shu, e.g., ¶ 0008 and 0019).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to mix a binder, conductive filler, and solvent with the active material and CEI additive in the ref.’s mixing method with the reasonable expectation of achieving a conductive network, improved coating strength, and uniform mixing, as taught by Shu.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Conclusion
The cited art made of record and not relied upon is considered pertinent to applicant's disclosure:
JP 2008270199 A (see mach. translation) also discloses forming a cathode by mixing LiPO2F2 in a cathode material slurry.
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/J.S.M./Examiner, Art Unit 1751
/JONATHAN G LEONG/Supervisory Patent Examiner, Art Unit 1751 8/18/2026
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