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
Applicant’s election without traverse of Claims 1-3 in the reply filed on 8/12/2026 is acknowledged.
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2021/0234160).
Regarding Claim 1, Kim meets the claimed,
A method for manufacturing a lithium-ion battery ([0069] teaches a method for producing a lithium-ion battery), the method comprising: providing a positive electrode precursor layer containing at least a lithium alloy with a lithium alloying potential of 0.5 V (vs Li/Li+) or higher ([0026] teaches the use of trilithium bismuthide as an additional alloy) and a positive electrode active material ([0020] teaches a positive electrode active material); providing a lithium-ion battery precursor including the positive electrode precursor layer ([0069] teaches a method for producing a lithium-ion battery. [0011] teaches that prior to initial charging, this battery has not formed an SEI and as such, can be considered a lithium-ion battery precursor. [0069] further teaches using the positive electrode as described previously), a separator layer ([0069] teaches a separator between the positive and negative electrode), and a negative electrode active material layer in this order ([0069] teaches a negative electrode) and impregnated with an electrolyte ([0069] teaches an injection of electrolyte solution); and performing initial charging of the lithium-ion battery precursor to change the positive electrode precursor layer to a positive electrode active material layer ([0070] teaches an initial charging. [0011] teaches that following the initial charge, an SEI forms which constitutes changing the positive electrode precursor layer into a positive electrode active material layer).
Regarding Claim 2, Kim meets the claimed,
The method according to claim 1, wherein the lithium alloy is selected from the group consisting of
L
i
3
B
i
,
L
i
3
S
b
, and
N
i
S
n
([0026] teaches the use of trilithium bismuthide,
L
i
3
B
i
, as an additional alloy).
Regarding Claim 3, Kim meets the claimed,
The method according to claim 1, wherein the positive electrode active material is lithium nickel cobalt manganese oxide (Formula 1 teaches a lithium NCM oxide when "d" is equal to 0).
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 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/884,142 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between Claim 1 of the instant application and claim 1 of the copending application is the additional requirement of the lithium alloy being a particle with a particle diameter D90 being smaller than 70 µm.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/884,142 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between Claim 2 of the instant application and claim 2 of the copending application is the additional requirement of a particle diameter D90 being smaller than 70 µm.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/884,142 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between Claim 3 of the instant application and claim 3 of the copending application is the additional requirement of a particle diameter D90 being smaller than 70 µm.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/768,437 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between Claim 1 of the instant application and claim 6 of the copending application is the additional requirement of the positive electrode layer comprising particles.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/A.Y.H./ Examiner, Art Unit 1744
/MICHAEL M. ROBINSON/Primary Examiner, Art Unit 1744
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