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 .
Response to Amendment
Examiner acknowledges amended Claims 1-4, 6, and 8-12 in the response filed on 7/23/2026.
Response to Arguments
Applicant's arguments filed 7/23/2026 have been fully considered but they are not persuasive.
Applicant argues that the data in Tables 1 and 2 shows that a positive electrode for a lithium battery including the unique combination of:
a heat suppression layer having a thickness greater than 1 μm to about 10 μm;
a positive active material layer having a thickness of about 30 μm to about 200 μm; and
a thickness ratio of the heat suppression layer to the positive active material layer of about 1:5 to about 1:20,
are critical in providing synergistic, superior, and unexpected results.
However, the evidence pointed to in the specification is not commensurate in scope with the claims. In particular, the evidence does not support the entire ranges for 1), 2), and 3) is critical. Additionally, the provided evidence does not support unexpected results for all possible combination and composition for all types of current collector composition, positive active material, heat suppression compound, etc. encompassed by Claim 1. The data are also not commensurate in scope with the closest prior art, Eguchi et al. and Uemura.
Examiner’s Comment
Regarding the limitation(s) “about” in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, “about” may refer to within one or more standard deviations, or within ± 30%, 20%, 10%, 5% of the stated value [0018].
For the purpose of evaluating prior art, the term “about” is ± 30%. Therefore, Claim 1 is interpreted as having a thickness ratio of the heat suppression layer to the positive active material is 0.035 to 0.26, wherein the thickness of the heat suppression layer is greater than 1 μm to 13 μm, and wherein the thickness of the positive active material layer is 21 μm to 260 μm.
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.
Claims 1-4, 6, and 8-13 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.
Claim 1 recites a positive electrode having a thickness ratio of a heat suppression layer to a positive active material layer is about 1:5 to about 1:20, wherein the thickness of the heat suppression layer is greater than 1 μm to about 10 μm, and wherein the thickness of the positive active material layer is about 30 μm to about 200 μm.
However, the instant limitations are indefinite. It is unclear how the respective thickness range for the heat suppression layer and positive active material layer can satisfy the ratio of about 1:5 to about 1:20. For example, if a thickness of the heat suppression layer is 1.001 μm (greater than 1 μm), the thickness of the positive active material layer must be about 5 μm to achieve a thickness ratio of about 1:5. However, the lower limit for the positive active material layer is about 30 μm. For similar reasons, Claim 4 is also indefinite.
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.
Claims 1-3, 6, 8-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2014203625 (“Eguchi et al.”). Please note that all citations will refer to the translation provided in IDS 10/30/2023.
With regards to Claims 1-3 and 6, Eguchi et al. teaches a positive electrode for a rechargeable lithium battery, the positive electrode comprising a current collector main body (1), a positive electrode active material layer (5) comprising a positive active material, and a coat layer (2 – corresponds to Applicant’s heat suppression layer) between the current collector main body and the positive electrode active material layer. Eguchi et al. teaches the coat layer comprises a TiO2 compound (Abstract, Figs. 1-5, [0015]-[0017], and [0045]). Considering that Eguchi et al.’s coat layer is between the current collector main body and positive electrode active material layer and comprises the same claimed compound in Applicant’s heat suppression layer, the Examiner deems that the TiO2 is a compound that suppresses heat generation. The properties set forth in the claim(s) are material properties. Eguchi et al. use the same material as claimed and therefore, would be expected to exhibit the same properties as claimed.
Eguchi et al. teaches a thickness of its current collector main body is 10 μm to 100 μm [0023] (20 μm in [0109]), a thickness of its coat layer is preferably 10 nm to 1 μm, and a thickness of its positive electrode is about 50 microns ([0070], and [0115]). Therefore, a thickness of about 29 μm for its positive electrode active material layer is within the purview of Eguchi et al. (e.g. 20 μm thick current collector main body, 1 μm thick coat layer, and about 29 μm thick positive electrode active material produces about 50 μm thick positive electrode). Thus, a thickness ratio of the coat layer (heat suppression layer) and the positive electrode active material layer overlaps with the claimed range of about 1:5 to about 1:20 (i.e. a thickness ratio of about 0.03 overlaps with the claimed about 0.05). It would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Examiner recognizes that Eguchi et al. teaches a thickness of its coat layer is 1 μm, and not necessarily greater than 1 μm. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775. In the instant case, Eguchi et al.’s teaching of 1 μm is obvious over a thickness value of 1.0001 μm, for example, absence of evidence to the contrary and/or evidence of unexpected results at the endpoint of 1 μm.
With regards to Claims 8 and 9, Eguchi et al. teaches the compound for suppressing heat generation is in a nano size scale with an average particle diameter of 10 nm to 1000 nm [0035].
With regards to Claim 10 and 11, Eguchi et al. teaches the heat suppression layer further comprises a binder, such as polytetrafluoroethylene (PTFE) ([0009] and [0016]).
With regards to Claim 13, Eguchi et al. teaches a rechargeable lithium battery comprising a positive electrode, a negative electrode comprising a negative active material, and an electrolyte [0094].
Claims 4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2014203625 (“Eguchi et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20130224587 (“Uemura”).
With regards to Claim 4, Eguchi et al. teaches a thickness ratio of the coat layer and the positive electrode active material layer as set forth above.
Eguchi et al. does not specifically teach the thickness ratio of the coat layer and the positive electrode active material layer is about 1:8 to about 1:15.
However, Uemura teaches a positive electrode for a rechargeable lithium battery, the positive electrode comprising a coating layer comprising a conductive undercoating agent composition (corresponds to Applicant’s heat suppression layer) between a current collector and a positive active material layer comprising a positive active material. Uemura teaches a thickness of its coating layer is preferably in the range of from 0.05 to 5 μm, and a thickness of its positive active material layer is 22 μm ([0054] and [0107]). Therefore, the thickness ratio of the coating layer and the positive active material layer is in the range of 0.002 to 0.227. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the claimed thickness ratio between the coating layer (heat suppression layer) and positive active material layer as claimed in order to achieve a coating layer with desirable electrical and adhesion properties with a suitable sized positive active material layer for the battery’s performance, capacity, etc. ([0054] and [0060]).
With regards to Claim 12, Eguchi et al. teaches its coat layer comprises a compound for suppressing heat generation and a binder as set forth above.
Eguchi et al. does not teach a mixing ratio of the compound for suppressing heat generation and the binder is in a weight of about 200:1 to about 20:1.
However, Uemura teaches a coating layer comprising TiO2 compound (corresponds to the claimed compound for suppressing heat generation) and a binder, wherein 1 to 10,000 parts by weight of the compound is per 100 parts by weight of the binder [0029]. Therefore, Uemura’s mixing ratio overlaps with Applicant’s claimed range. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the claimed mixing ratio in Eguchi et al. in order to form an electrochemically stable coating layer ([0014], [0015], and [0030]).
Claims 1-4, 6, and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20130224587 (“Uemura”).
With regards to Claims 1-4 and 6, Uemura teaches a positive electrode for a rechargeable lithium battery, the positive electrode comprising a current collector, a positive active material layer comprising a positive active material, and a coating layer comprising a conductive undercoating agent composition for coating a current collector (corresponds to Applicant’s heat suppression layer) and is between the current collector and the positive active material layer. Uemura teaches the conductive undercoating agent composition comprises TiO2 compound (Fig. 1, [0001], [0002], [0016], [0017], [0023], [0027], [0057], [0107], and [0156]-[0158]). Considering that Uemura’s coating layer is between the current collector and positive active material layer and comprises the same claimed compound in Applicant’s heat suppression layer, the Examiner deems that the TiO2 is a compound that suppresses heat generation. The properties set forth in the claim(s) are material properties. Uemura uses the same material as claimed and therefore, would be expected to exhibit the same properties as claimed.
Uemura teaches a thickness of its coating layer is preferably in the range of from 0.05 to 5 μm, and a thickness of its positive active material layer is 22 μm, which meets Applicant’s claimed lower endpoint of about 30 μm ([0054] and [0107]). Therefore, the thickness ratio of the coating layer (heat suppression layer) and the positive active material layer is in the range of 0.002 to 0.227. It would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
With regards to Claims 8 and 9, Uemura teaches the compound for suppressing heat generation is in a nano size scale having an average particle diameter of 0.01 to 10 μm [0027].
With regards to Claim 10 and 11, Uemura teaches the coating layer further comprises a binder, such as polyvinyl alcohol ([0017] and [0020]).
With regards to Claim 12, Uemura teaches the coating layer comprising TiO2 compound (corresponds to the claimed compound for suppressing heat generation) and a binder, wherein 1 to 10,000 parts by weight of the compound is per 100 parts by weight of the binder [0029]. Therefore, Uemura’s mixing ratio overlaps with Applicant’s claimed range.
With regards to Claim 13, Uemura teaches a rechargeable lithium battery comprising a positive electrode, a negative electrode comprising a negative active material, and an electrolyte ([0106]-[0111]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
