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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-18, drawn to product, classified in H01M 4/382.
II. Claims 19-20, drawn to process, classified in H01M 4/0404.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, Invention I can be prepared by laminating the anode current collector, the electrolyte, and the cathode rather than stacking them.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions 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 an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve 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 restriction 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 upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions 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 inventions 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 invention.
During a telephone conversation with 747-273-2070 on 06/12/2026, a provisional election was made without traverse to prosecute the invention of Invention I, claims 1-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on August 16, 2024, June 18, 2025, September 12, 2025, November 10, 2025, and April 07, 2026 have been considered by the examiner.
Specification
A substitute specification includinga substitute claim set is required pursuant to 37 CFR 1.125(a) because Formulas 1-12 for the fluorinated polymers are extremely blurry.
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Claim Objections
Claims 6, 7, 8, and 10 are objected to because of the following informalities:
The images for formulas 1-12 for the fluorinated polymers are extremely blurry and require replacement. For the purpose of compact prosecution the examiner has provided art rejections as there is enough clarity in at least one formula required in applicable claims.
Additionally, in the instant claims, page 3 lines 14 and 21 recites that “Ar1 and Ar3 are each independently an aromatic cyclic group selected from-“. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “Ar” in claim 6 is used by the claim to mean “an aromatic cyclic group selected” while the accepted meaning is “Argon”. For the purpose of prosecution, the term is definite and treated inconsistent with the accepted meaning because the specification via claim 6 has clearly redefined the term.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 10 is 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.
Claim 10 recites the limitation “the protective layer comprises a cross-linked polymer of a polyvinyl alcohol and a polymer represented by Formula 9 or Formula 10.” However, both Formulas 9 and 10 contain the variables “n” and “m” that are not defined in claim 10 nor claim 1 from which is depends. For the purposes of compact prosecution, the examiner is using the limitations of “n” and “m” as defined in instant claim 8 lines 4-5.
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 1-3, 5, 11-12, and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2024/0113298, hereinafter Thokchom, and further in view of U.S. Pre-Grant Publication No. 2015/0140439, hereinafter Hasegawa.
Regarding claims 1-3 and 5, Thokchom teaches an anode for a lithium metal battery (Fig 1: lithium metal cell 100 for a battery) comprising an anode current collector (Fig 3: anode current collector 302) and a protective layer on the anode current collector (Fig 3: protective coating 102). The anode further comprises an anode active material layer (Fig 3: lithium metal anode 304) between the anode current collector (302) and the protective layer (102) (instant claim 1). The protective coatings, such as nanoceramic coating and polymer electrolyte coatings, comprise polymeric, ionically conductive composite materials [0030]. The protective coatings improve mechanical and thermal stability and improve ionic conductivity while also protecting from lithium consumption and overall safety of the battery [0018].
However, Thokchom fails to teach the protective layer that comprises a first polymer comprising a hydroxyl group (claim 1) such as polyvinyl alcohol (instant claim 2), boric acid (instant claim 1) that has a wt% of 5-100 (instant claim 5), and a second polymer (instant claim 3).
Hasegawa teaches a coating liquid for a lithium secondary battery that comprises of polyvinyl alcohol (reads on first polymer), boric acid and/or an organometallic compound having the ability of cross-linking PVA, an inorganic filler, a water-soluble compound having a carboxyl group (carboxyl groups always contain hydroxyl groups) (reads on second polymer), and water (Abstract and [0092]). The coating liquid comprises boric acid in an amount of 10 parts by weight or more and 40 parts by weight or less with respect to 100 parts by weight of polyvinyl alcohol. This demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05). One of ordinary skill in the art would appreciate that a mixture with PVA, boric acid, and a second polymer having a hydroxyl group in the claimed weight percents will result in cross-linking. This coating liquid is used for the purpose of excellent heat shape stability [0010].
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have substituted the protective layer of Hasegawa in the protective layer of Thokchom for the purpose of excellent thermal and mechanical stability (MPE 2144.06).
Regarding claim 11, Thokchom and Hasegawa teach the anode as claimed in claim 1. Additionally, Thokchom teaches the protective layer further comprises a lithium salt and a thickness of the protective layer is about 1 micrometer to about 10 micrometers (“the material used to form the nanoceramic coating, i.e., the nanoceramic, polymer, UV curable polymer binder with lithium salts, dispersant, etc. are combined in predetermined ratio. The nanoceramic coating is applied and cured such that the coating has a thickness in a range of 3-15 microns. In one particular embodiment, the nanoceramic coating has a thickness of 5 microns” [0034]).
Regarding claim 12, Thokchom and Hasegawa teach the anode as claimed in claim 1. Additionally, Thokchom teaches the anode comprises the anode active material layer that comprises lithium metal foil (“the anode electrode 304 is formed of suitable lithium metal material, such as lithium foil” [0027]).
Regarding claim 15, Thokchom and Hasegawa teach a lithium metal battery (Fig 1: lithium metal cell 100 for a battery), the lithium metal battery comprising a cathode (Fig 1: cathode structure 104), the anode as claimed in claim 1 (Fig 1: anode structure 108), and an electrolyte between the cathode and the anode (Fig 1: electrolyte region 106).
Regarding claim 16, Thokchom and Hasegawa teach the lithium metal battery as claimed in claim 15. Additionally, Thokchom teaches the electrolyte comprises a liquid electrolyte, a solid electrolyte, a gel electrolyte, or a combination thereof (“the electrolyte material 112 may comprise a liquid electrolyte material that is soaked into the separator 110” [0025]).
Regarding claim 17, Thokchom and Hasegawa teach the lithium metal battery as claimed in claim 15. Additionally, Thokchom teaches further comprising a separator (“The electrolyte region 106 includes a separator 110 and an electrolyte material 112” [0024]).
Regarding claim 18, Thokchom and Hasegawa teach the lithium metal battery as claimed in claim 15. Additionally, Thokchom teaches the cathode (104) comprises a cathode current collector (Fig 2: cathode current collector 202) and a cathode active material layer (Fig 2: cathode electrode 204). At least one of the cathode current collector or the anode current collector comprises a base film and a metal layer on at least one side of the base film. The base film comprises the polymer polyimide and the metal layer comprises copper, nickel, aluminum, or an alloy thereof. The metal layer comprises aluminum, stainless steel, or titanium. (“material used to form the cathode current collector 202 is aluminum, stainless steel, titanium, other metal coated with polymer sheet (e.g. polyimide)” [0020]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Thokchom and Hasegawa as applied to claim 1 above, and further in view of Hasegawa. Regarding claim 10, Thokchom and Hasegawa teach, as mentioned above, a lithium metal battery that has an anode with a current collector, an anode active material layer, and a protective layer. The protective layer comprises of a first and second polymer and boric acid.
However, Thokchom and Hasegawa fail to teach the second polymer being represented by instant’s Formula 9 nor Formula 10.
Hasegawa teaches that the coating liquid contains a water-soluble compound having a carboxylic group [0035]. The polymer may contain any other compound, as long as water solubility is not impaired [0036].
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have used any polymer with a carboxylic group in the protective layer of modified Thokchom for the purpose of increasing viscosity and being heat-resistant, as taught by Hasegawa [0040-0041].
Claims 4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Thokchom and Hasegawa as applied to claim 1 above, and further in view of Yang, Chin-Ping, et. Al., Organosoluble Optically Transpaent poly(amide-imide)s based on 2,2-bis[N-(3-carboxyphenyl)phthalimidyl]-hexafluoropropane and 2,2-bis[N-(4-carboxyphenyl) phthalimidyl]-hexafluoropropane and various aromatic diamines. Springer-Verlag. 2001., hereinafter Yang.
Regarding claims and 6-8, Thokchom and Hasegawa teach, as mentioned above, a lithium metal battery that has an anode with a current collector, an anode active material layer, and a protective layer. The protective layer consists of polyvinyl alcohol (first polymer), boric acid, and a water soluble polymer that has a carboxylic group (second polymer). The water soluble polymer is used for the purpose of increasing viscosity and being heat-resistant [0040-0041].
However, Thokchom and Hasegawa fail to teach the second polymer being a fluorinated polyamic acid comprising a carboxyl group or a fluorinated polyimide comprising a carboxyl group represented by one of instant’s Formula 1-12.
Yang teaches that aromatic polyimides are well known as polymer material of high performance for their excellent thermal stabilities and balanced mechanical and electrical properties. They are mainly used in electronic industries in the forms of films (P1, Introduction, L1-5). This specific study synthesized the diimide-dicarboxylic acid 2,2-bis[N-(3-carboxyphenyl) phthalimidyl]hexafluoropropane (m-I) (instant’s Formula 11 where n=1 and m=0, and overlaps with instant Formulas 3 and 7) which proven to have excellent thermal stability together with good tensile properties, making it a new candidate for high-performance polymeric materials (P11, Conclusion).
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have substituted the polymer of Yang for the second polymer of modified Thokchom for the purpose of increased thermal stability.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Thokchom and Hasegawa as applied to claim 3 above, and further in view of U.S. Pre-Grant Publication No. 2017/0117536, hereinafter Choi.
Regarding claim 9, Thokchom and Hasegawa teach, as mentioned above, a lithium metal battery that has an anode with a current collector, an anode active material layer, and a protective layer. The protective layer comprises of a first and second polymer and boric acid.
However, Thokchom and Hasegawa fail to teach a weight ratio of the first polymer to the second polymer being about 50:50 to about 99:1.
Choi teaches a protected anode that includes an anode and a protective layer on the anode. The protective layer includes a copolymer including a first repeating unit represented by Formula 1 and a second repeating unit represented by Formula 2 (Abstract and [0113-0116]). The molar ratio of the repeating unit of Formula 1 to the repeating unit of Formula 2 may be in the range of about 30:70 to about 99:1 [0069]. This demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05). It is understood that when the amount of the repeating unit of Formula 1 is too small, the copolymer may have deteriorated mechanical strength and solubility thereof with respect to a solvent may be reduced. On the other hand, when the amount of the repeating unit of Formula 1 is too large, ionic conductivity and charge delocalization effects of the random copolymer may deteriorate [0069]. Therefore, the molar ratio of polymers is considered an art recognized result effective variable.
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have optimized the molar ratio of the first and second polymers of modified Thokchom in order to maintain the mechanical strength and ionic conductivity of the protective layer, as taught by Choi. In optimizing this ratio, one would arrive at the claimed relationship, barring evidence to criticality of unexpected results. One of ordinary skill in the art would appreciate that the change in molar ratio will have effects that are directly proportional to the change in weight ratio.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Thokchom and Hasegawa as applied to claim 1 above, and further in view of U.S. Pre-Grant Publication No. 2017/0077546, hereinafter Zhamu.
Regarding claim 13, Thokchom and Hasegawa teach, as mentioned above, a lithium metal battery that has an anode with a current collector, a lithium foil anode active material layer, and a protective layer. The protective layer comprises of a first and second polymer and boric acid. The purpose of the lithium foil anode active material layer is to improve energy density performance (Thokchom, [0004]).
However, Thokchom and Hasegawa fail to teach an active material layer with a metal and a carbon-based material with a particle diameter of 10nm to 100nm.
Zhamu teaches an alkali metal-ion battery comprising an anode having an anode active material and an anode current collector, a cathode, and a separator (Abstract). The anode active material is preferred to be carbon block, amorphous carbon, activated carbon, Na2C8H4O4, disodium terephthalate, carboxylate based materials, or a combination thereof [0036]. The anode active material has a primary or secondary particle size of 10nm to 20 microns in diameter [0059]. This demonstrates an overlap in ranges taught. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a Prima facie case of obviousness exists (MPEP 2144.05). The purpose of having an alkali metal (not lithium alone) in the active material is to increase volumetric energy density and high gravimetric energy density [0002].
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to substitute the anode active material of Zhamu in the anode of modified Thokchom for the purpose of energy density performance.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Thokchom and Hasegawa as applied to claim 1 above, and further in view of U.S. Patent No. 8105717 B1, hereinafter Skotheim.
Regarding claim 14, Thokchom and Hasegawa teach, as mentioned above, a lithium metal battery that has an anode with a current collector, an anode active material layer, and a protective layer, sequentially. The protective layer comprises of a first and second polymer and boric acid.
However, Thokchom and Hasegawa fail to teach a lithium metal layer on a surface of the protective layer that is not adjacent to the anode active material layer.
Skotheim teaches an anode for an electrochemical cell that comprises of a first anode active layer comprising lithium metal and a multi-layer structure in contact with a surface layer of the first anode active layer. The multi-layer structure comprises of three or more layers where each layer is selected from single ion conducting layers, polymer layers, and metal alloy layers (C2 L38-46 and C3 L19-24). The anode may also further comprise a substrate that functions as the current collector on the surface of the first anode active layer on the opposite side of the multi-layer structure (C5 L17-29).
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to have included Skotheim’s single ion conducting layer or metal alloy layer on the surface of the protective layer opposite to that of the active material layer of modified Thokchom in order to increase cycle life, high lithium cycling efficiency, and high energy density (C2 L29-34).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mia K Holbrook whose telephone number is (571)272-9253. The examiner can normally be reached Monday - Friday 7:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at (571) 270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.K.H./Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
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