Introductory Notes
Any paragraph citation of the instant is in reference to the U.S. published patent application.
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
Applicant's election with traverse of Species A, Figures 7-9 with Claims 1 and 3-7 in the reply filed on 7/7/2026 is acknowledged. The traversal is on the ground(s) that the “search and examination of the entire application could be made without serious burden”. This is not found persuasive because the inventions are distinct as set forth in the restriction requirement mailed on 6/10/2026. Notably the applicant does not explain why there would be no serious burden or allege that the prior art that reads on one species would necessarily read on the other. For example, it is not clear art reading on composition Li3PO4 of Fig. 7 would necessarily read on composition Li6.4La3Zr1.4Ta0.6O12 of Fig. 10. These two compositions would each require a separate and unique search.
The requirement is still deemed proper and is therefore made FINAL.
Claim 2 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/7/2026.
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.
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 1 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over KULISCH (EP 3246968 A1, supplied with an IDS).
Regarding claim 1, KULISCH discloses a lithium metal negative electrode secondary battery comprising:
a positive electrode (“cathode” [0110]);
a separator (“separator” [0118]);
a negative electrode (“anode” [0108]);
and an electrolyte solution (“electrolyte” [0125]), wherein the electrolyte solution includes lithium ions (“the material facilitates the transport of ions (e.g., lithium ions) between the anode and the cathode” [0125]),
the separator is interposed between the positive electrode and the negative electrode (“separator can be configured to inhibit (e.g., prevent) physical contact between a first electrode and a second electrode” [0118]),
the negative electrode includes a negative electrode base material (“lithium metal such as lithium foil and lithium deposited onto a conductive substrate” [0108]) and a covering layer (“protective layer” [0015]),
the covering layer covers at least part of a surface of the negative electrode base material (“a second layer 30 (e.g., a protective layer …) disposed on the first layer at first surface 30'.” [0027]),
the covering layer includes a lithium-ion conductor (“a protective layer including a plurality of particles” [0003] as well as “the particles of a protective layer, a protective layer itself, and/or the resulting deposited layer, may comprise a material including … Li3PO4” [0059] which overlaps with the instants use of Li3PO4 as a lithium-ion conductor as shown in Fig. 7 of the instant; notably it is the ‘plurality of particles’ that is being mapped to the lithium-ion conductor and not material such as Li3PO4 alone),
and the lithium-ion conductor has a lithium-ion conductivity from 1.0x10-13 to 1.0x10-9 S/cm (“a portion of the plurality of particles comprise a non-ionically conductive material” [0008] as well as “the protective layer and/or the resulting deposited layer may be substantially non-ionically conductive … less than about 10-9 S/cm” [0063]).
Overlapping ranges are prima facie obvious (see MPEP 2144.05, I). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to select the overlapping portion of the conductivity range in order to arrive at favorable charging/discharging characteristics.
Regarding claim 3, KULISCH discloses the covering layer further includes a binder, and a volume fraction of the binder relative to a sum of the lithium-ion conductor and the binder is 0.2 or more (“the second layer, comprises a polymeric material (e.g., greater than about 20 vol% polymer versus total volume fraction of the layer)” [0013]).
Regarding claim 4, KULISCH discloses a relationship of an expression (1-1) is satisfied:
0.3≤A2/A1≤1.0 (1-1) where A1 represents an area of a first region, A2 represents an area of a second region, the first region refers to a region of the surface of the negative electrode base material facing the positive electrode, and the second region refers to a region of the first region covered with the lithium-ion conductor (as shown in conceptual drawings Fig. 1B and Figs. 2A-2B the coverage of the particles 40 on the first layer 20 is taught to be between 30% and 100%)
Regarding claim 5, KULISCH discloses the covering layer has a thickness from 0.01 to 100 µm (“second layer may have an average thickness between about 0.1 microns and about 5 microns” [0048]).
Regarding claim 6, KULISCH discloses the lithium-ion conductor includes lithium phosphate (“the particles of a protective layer, a protective layer itself, and/or the resulting deposited layer, may comprise a material including … Li3PO4” [0059])
Regarding claim 7, KULISCH discloses the lithium metal negative electrode secondary battery is an anode-free battery (“an anode comprising lithium metal” [0003]; notably the claim is being interpreted as the electrode is free of anode active materials other than lithium metal because the battery must necessarily have an anode; as noted by the instant in [0059] which states in an “anode-free battery, at a fully discharged state, Li metal may be fully dissolved”; furthermore the method of manufacture is not relevant to the claimed final product ‘secondary battery’ of claim 1).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 3, 6 and 7 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 3, 5 and 6 of copending Application No. 18/405277 (reference application).
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The difference when comparing claim 1 of the instant to claim 1 of the reference application is that the instant uses the term “covering layer” whereas the reference application uses the term “dispersed phase”, however each term has the same claimed scope. Dependent claims 3, 6 and 7 of the instant are identical to dependent claims 3, 5 and 6 of the reference application respectively.
Conclusion
The prior art made of record and not relied upon considered pertinent to applicant's disclosure:
LI (US 20220223871 A1) directed to a protective material for a negative electrode including a lithium phosphate and a polymer.
LEE (US 20040137330 A1) directed to a negative electrode pre-treatment layer that has a thickness of 50 to 5000 Å and includes a lithium ion conductive material with an ionic conductivity of at least 1x10-10 S/cm.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVIS L MARTIN whose telephone number is (703)756-5449. The examiner can normally be reached M-F, 8am-5pm ET.
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/T.L.M./Examiner, Art Unit 1721
/ALLISON BOURKE/ Supervisory Patent Examiner, Art Unit 1721
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