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 .
Claims 1-16 are pending in application.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In particular, the specification fails to enable the full scope of the claimed protective layer with an ion diffusivity coefficient (D) in a range of 1.2 m2/s to 2.3 m2/s. Therefore, as the specification fails to teach the subject matter of the claims, undue experimentation is necessary to practice the claimed invention. See MPEP 2164.01(a).
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO's determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
The factors described above have been considered as follows:
(A) The breadth of the claims: The breadth of the claimed ion diffusivity range of 1.2 m2/s to 2.3 m2/s is commensurate with the scope of the disclosure, as the specification teaches the ion diffusivity range “may” be as claimed (para. [0017]). No examples or features taught as critical regarding the ion diffusivity range are provided in the specification.
(B) The nature of the invention: The specification of the instant application explains that subject matter to which the claimed invention pertains is a protective layer in an anode-less solid-state battery having lithium-ion conductivity and capable of allowing metallic lithium to be deposited on the anode current collector (para. [0005]). One of ordinary skill in the art at the time of the effective filing date of the claimed invention would have been familiar with the claimed subject matter, a protective layer having lithium-ion diffusivity, as it pertains to the claim.
(C) The state of the prior art: The prior art suggests that the claimed ion diffusivity range of 1.2 m2/s to 2.3 m2/s is orders of magnitude greater than expected for a protective layer in a lithium battery. Jang (US PG Pub 2022/0190346 A1) discloses a lithium secondary battery with a composite ion conductive layer with a lithium-ion conductivity ranging from 10-8 S/cm to 5x10-2 S/cm on the anode current collector (abstract). Jang also discloses an ion conductive polymer composite layer disposed between the anode current collector and solid electrolyte (para. [0013], Fig. 2). In one example, 1 M lithium salt electrolyte is dissolved in a mixture of ethylene carbonate (EC) and diethyl carbonate (DEC) (para. [0122]). The Nernst-Einstein equation may be used to interconvert diffusion coefficient with molar limiting ion conductivity, the latter of which may be converted from ion conductivity using ion concentration in solution (see Datasheet: Electrical Conductivity based on Diffusion Coefficients by Aquion). The diffusion coefficients are calculated below from the ion conductivity range reported by Jang:
D
i
=
R
T
z
i
2
F
2
Λ
m
,
i
0
Where zi = charge of ion i, T = absolute temperature in K, F = Faraday’s constant 9.6485 x 104 C / mol, R = ideal gas constant 8.31446 J/ (K mol), Di- = diffusion coefficient of ion i in m2/2,
Λ
m
,
i
0
= molar limiting conductivity of ion I in Sm2/mol.
D
i
=
8.31446
J
K
m
o
l
*
298.15
K
(
+
1
)
2
(
9.6485
x
10
4
C
/
m
o
l
)
2
10
-
6
S
m
*
m
3
1000
m
o
l
=
2.66
x
10
-
16
m
2
s
D
i
=
8.31446
J
K
m
o
l
*
298.15
K
(
+
1
)
2
(
9.6485
x
10
4
C
/
m
o
l
)
2
5
S
m
*
m
3
1000
m
o
l
=
1.33
x
10
-
9
m
2
s
Therefore, the corresponding range of ion diffusion coefficients for lithium-ion diffusion through the polymer-composite protective layer taught by Jang is 2.66 x 10-16 m2/s to 1.33 x 10-9 m2/s, orders of magnitude less than the claimed range of 1.2 m2/s to 2.3 m2/s.
It is expected that the lithium-ion diffusion coefficient for lithium-ion diffusion through the polymer layer of Jang is less than that of a similar solvent at room temperature. Soetens et al. (J. Phys. Chem. A. 1998, 102, 7, 1055-1061) discloses a molecular dynamics simulation for lithium-ion diffusion in a solution of LiBF4 and ethylene carbonate with a molarity of 0.05-0.07 M revealing a diffusion coefficient range of 0.3 – 0.6 x 10-9 m2/s from 298 to 323 K (abstract). Therefore, multiple sources reveal a range of diffusion coefficients which are many orders of magnitude less than that claimed in the instant application.
Lastly, the case of lithium-ion diffusion through a solid lithium alloy (Li-Mg) in a lithium-ion battery was studied by Krauskopf et al (Adv. Energy Mater. 2019, 9, 1902568). Krauskopf reported a diffusion coefficient ranging from 3.9 x 10-12 cm2/s at 0 °C to 2.6 x 10-9 cm2/s at 100 °C (See final two paragraphs of 3.2, page 10 of 13) or equivalently 3.9 x 10-9 cm2/s at 0 °C to 2.6 x 10-5 cm2/s at 100 °C. Krauskopf shows that for the composite protective layer of the instant application, which also requires a metal capable of alloying with lithium such as Li-Mg, the claimed lithium-ion diffusion coefficient range is still far too high to be reasonable.
(D) The level of one of ordinary skill: One of ordinary skill in the art at the time of the effective filing date of the claimed invention would have been familiar with the nature of the invention and claimed subject matter, i.e. a protective layer in a solid-state lithium metal battery, as well as prior art relating to the diffusion of lithium ions through said protective layer.
(E) The level of predictability in the art: The claimed range of lithium-ion diffusion coefficients are orders of magnitude greater than what one of ordinary skill in the art at the time of the effective filing date of the claimed invention would have considered predictable. In the discussion of prior art examples above, in various lithium ion conducting systems, including a lithium-metal alloy used in a lithium metal battery having similar materials to the instant application, far lower lithium-ion diffusivity coefficients have been reported.
(F) The amount of direction provided by the inventor: The inventor provides an equation (Eqn. 1, para. [0099]) in the specification that was used to calculate ion diffusivity coefficient. Although not included in the disclosure, the variables in equation 1 are defined in the supporting reference provided, Nickol et al. (J. Electrochem. Soc. 2020, 167, 090546) (see Eqn. 12). A schematic of a potential vs. time plot is shown (Fig. 13) to address how the values for equation 1 are obtained from Fig. 12 (para. [0099]). However, the precise values input into the calculation to determine diffusivity coefficient are not reported in the specification and still differ by many orders of magnitude from the calculated diffusion coefficients reported in the supporting reference (see Fig. 11).
(G) The existence of working examples: A table of calculated diffusion coefficient values are provided in the specification (para. [0100], Table 1). However, the supporting calculations for these values are not reported and the results do not appear to be reasonable in the context of the supporting reference, Nickol et al. as discussed in factor “F” above.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Although an example (ex. 2) and two comparative examples (ex. 3-4) are provided in Table 1 of the specification (para. [0100]) it is not clear how Applicant arrived at the calculated diffusivity coefficients, and the resulting values are not reasonable in view of the prior art references discussed above.
In weighing the above stated factors, it is the Examiner’s position that undue experimentation is required to determine whether the claimed protective layer with a lithium-ion diffusivity coefficient range of 1.2 m2/s to 2.3 m2/s is attainable. Accordingly, even though the statute does not use the term “undue experimentation,” it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.”). It is therefore concluded that the scope of the claims are not enabled by Applicant’s disclosure.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi (US PG Pub 2022/0166003 A1).
Regarding claim 1, Choi discloses an all-solid-state battery (title) comprising an anode current collector (para. [0039], ref. 21, Fig. 1), a coating layer acting as a protective layer disposed on the anode current collector (para. [0039], ref. 22, Fig. 1), and a solid electrolyte layer (para. [0039], ref. 30, Fig. 1) disposed on the coating layer. Choi also discloses a cathode active material layer (para. [0041], ref. 12, Fig. 1) which comprises a cathode active material disposed on the solid electrolyte layer and a cathode current collector (para. [0040], ref. 11, Fig. 1) disposed on the cathode active material layer. Furthermore, the coating layer comprises magnesium particles (para. [0059]) containing a material which may react with lithium ions to form an alloy or compound (para. [0059]) such as magnesium, a magnesium compound including MgO, or a combination (para. [0060]). Therefore, in one embodiment, the coating layer comprises a metal and a metal oxide capable of alloying with lithium.
Regarding claim 2, the coating layer comprises a metal where the metal is magnesium (para. [0055]-[0059]).
Regarding claim 3, the coating layer comprises a magnesium compound which may be magnesium oxide (MgO) (para. [0060]), a metal oxide.
Regarding claim 10, Choi discloses a method of producing an all-solid-state battery comprising preparing a slurry of a carbon material, a magnesium-based particle containing magnesium, a magnesium compound, or a combination of the two, and a binder (para. [0019]). The magnesium compound may be MgO, a metal oxide (para. [0060]). Therefore, in one embodiment, the slurry comprises a conductive material, a metal, a metal oxide, and a binder. The method disclosed by Choi further involves forming a coating layer by applying the slurry onto an anode current collector (para. [0065]), forming a solid electrolyte layer on the coating layer (para. [0018]) and forming a cathode layer (para. [0039], ref. 10, Fig. 1) comprising a cathode active material layer (para. [0041], ref. 12, Fig. 1) below a cathode current collector (para. [0041], ref. 11, Fig. 1).
Regarding claim 11, the coating layer (para. [0039], ref. 22, Fig. 1) comprises a metal where the metal is magnesium (para. [0055]-[0059]).
Regarding claim 12, the coating layer comprises a magnesium compound which may be magnesium oxide (MgO) (para. [0060]), a metal oxide.
Claims 1, 7, 10 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jang (US PG Pub 2022/0190346 A1) as evidenced by Datasheet: Electrical Conductivity based on Diffusion Coefficients by Aquion.
Regarding claim 1, Jang discloses a lithium secondary battery (abstract) with an anode current collector, a polymer composite film serving as a protective layer disposed on the anode current collector (para. [0013], Fig. 2), a solid electrolyte layer disposed on the protective layer (para. [0058], Fig. 2), and a cathode layer and cathode current collector disposed on the solid electrolyte layer (para. [0065], Fig. 2). Furthermore, the protective layer is formulated with a lithium ion conducting additive such as LiO2 (para. [0032]) and lithium counter-ions to various lithium salts (para. [0103]), hence containing a metal and metal oxide capable of alloying with lithium.
Regarding claim 10, Jang discloses a method of manufacturing an all-solid-state battery, including preparing a slurry by mixing lithium ion conducting additive such as LiO2 (para. [0032]), which is a metal oxide, lithium salts containing a lithium counter-ion (para. [0103]), which contains a metal, a conductive material such as carbon nanotubes (para. [0048]), and an elastomeric binder (para. [0023]). Furthermore, the protective layer is formed on the anode current collector (para. [0013], Fig. 2), a solid electrolyte layer is formed on the protective layer (para. [0058], Fig. 2), and a cathode layer and cathode current collector are formed on the solid electrolyte layer (para. [0065], Fig. 2).
Regarding claims 7 and 14, Jang further discloses that the composite ion conductive layer, or protective layer, has a lithium-ion conductivity ranging from 10-8 S/cm to 5x10-2 S/cm (abstract). In one example, 1 M lithium salt electrolyte is dissolved in a mixture of ethylene carbonate (EC) and diethyl carbonate (DEC) (para. [0122]). The Nernst-Einstein equation may be used to interconvert diffusion coefficient with molar limiting ion conductivity, the latter of which may be converted from ion conductivity using ion concentration in solution (see Datasheet: Electrical Conductivity based on Diffusion Coefficients by Aquion). The diffusion coefficients are calculated below from the ion conductivity range reported by Jang:
D
i
=
R
T
z
i
2
F
2
Λ
m
,
i
0
Where zi = charge of ion i, T = absolute temperature in K, F = Faraday’s constant 9.6485 x 104 C / mol, R = ideal gas constant 8.31446 J/ (K mol), Di = diffusion coefficient of ion i in m2/s,
Λ
m
,
i
0
= molar limiting conductivity of ion I in Sm2/mol.
D
i
=
8.31446
J
K
m
o
l
*
298.15
K
(
+
1
)
2
(
9.6485
x
10
4
C
/
m
o
l
)
2
10
-
6
S
m
*
m
3
1000
m
o
l
=
2.66
x
10
-
16
m
2
s
D
i
=
8.31446
J
K
m
o
l
*
298.15
K
(
+
1
)
2
(
9.6485
x
10
4
C
/
m
o
l
)
2
5
S
m
*
m
3
1000
m
o
l
=
1.33
x
10
-
9
m
2
s
Therefore, because Jang discloses the claimed solid-state battery, it is expected that the ion diffusion coefficients for lithium-ion diffusion through the polymer-composite protective layer could be within the range of 2.66 x 10-16 m2/s to 1.33 x 10-9 m2/s rather than the claimed range of 1.2 m2/s to 2.3 m2/s.
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.
11. 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.
12. 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.
13. Claims 8-9 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Choi (US PG Pub 2022/0166003 A1).
Regarding claim 8, the average particle size (D50) of the magnesium-based particles which may contain a metal, a metal oxide, or both (para. [0059]-[0060]) may be 10 nm to 2 µm (para. [0062]), overlapping the claimed range of 0.1 µm to 1 µm. MPEP 2144.05.
Regarding claim 9, the coating layer (ref. 22, Fig. 1) which serves as a protective layer is may have a thickness of 0.1 µm to 20 µm (para. [0063]), overlapping the claimed range of 1 µm to 20 µm. MPEP 2144.05.
Regarding claim 15, the average particle size (D50) of the magnesium-based particles which may contain a metal, a metal oxide, or both (para. [0059]-[0060]) may be 10 nm to 2 µm (para. [0062]), overlapping the claimed range of 0.1 µm to 1 µm. MPEP 2144.05.
Regarding claim 16, the coating layer (ref. 22, Fig. 1) which serves as a protective layer is may have a thickness of 0.1 µm to 20 µm (para. [0063]), overlapping the claimed range of 1 µm to 20 µm. MPEP 2144.05.
Claims 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US PG Pub 2022/0344666 A1) in view of Li (US PG Pub 2020/0343582 A1).
Regarding claim 1, Li ‘666 discloses an all-solid-state battery (title) comprising an anode current collector (para. [0013], ref. 2, Fig. 2), a protective layer (para. [0013], ref. 6, Fig. 2) disposed on the anode current collector, a solid electrolyte layer (para. [0013], ref. 5, Fig. 2) disposed on the protective layer, and a cathode layer comprising a cathode active material layer (para. [0013], ref. 3, Fig. 2) disposed on the solid electrolyte layer and a cathode current collector (para. [0013], ref. 4, Fig. 2) disposed on the cathode active material layer. Li ‘666 further discloses that the protective layer comprises a Mg-containing particle which may be a simple substance of Mg (para. [0019]) or an oxide particle containing Mg and O (para. [0021]). Li ‘666 also discloses that active materials may be included in the protective layer (para. [0023]) in addition to the Mg-containing particles, which may be a lithium alloy containing a metal capable of alloying with lithium such as Li-Mg (para. [0033]).
However, Li ‘666 fails to explicitly teach both the oxide particles and metal particles together or that the oxide particles form an alloy with lithium.
Li ‘582 teaches an all-solid battery (title) wherein a protective layer (para. [0034], ref. 18, Fig. 1) disposed between the solid electrolyte layer (para. [0034], ref. 11, Fig. 1) and the anode layer (para. [0034], ref. 17, Fig. 1) comprises a composite metal oxide (para. [0033]) which is an oxide of an alloy and Li (para. [0037]) such as Li-Mg-O (para. [0040]). Furthermore, Li ‘582 teaches that the composite metal oxide results from charging the battery, and MgO and Li ions result in the formation of Li-Mg-O (para. [0040]).
Li ‘582 also teaches that the oxide reacts with lithium ions to form an Li-M-O alloy which is more stable than lithium metal and functions as a protective layer by suppressing the reaction between lithium metal and the solid electrolyte (para. [0050]). Furthermore, interface resistance is reduced after repeated charge and discharge cycles as a result (para. 0030]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have used the oxide form of the Mg-containing particles in addition to the Li-Mg alloy active materials of Li ‘666 to promote a stable Li-Mg-O interface between the solid electrolyte and anode layer as taught by Li ‘582 to suppress a rise in interface resistance after repeated charge-discharge cycles.
Regarding claim 2, Li ’666 further discloses that the active materials may be included in the protective layer (para. [0023]) in addition to the Mg-containing particles, which may be a lithium alloy containing a metal capable of alloying with lithium such as Li-Mg (para. [0033]).
Regarding claim 3, Li ’666 also discloses that the protective layer may comprise Mg-containing particles which are oxide particles containing Mg and O such as a composite metal oxide, Mg-Li-O (para. [0021]). It is known in the art that the composite metal oxide Li-Mg-O results from charging the battery when MgO and Li ions react as evidenced by Li ‘582 (para. [0040]). Hence, Li ‘666 discloses a protective layer comprising MgO.
Regarding claim 4, the combination of Li ’666 and Li ‘582 teach a combination of oxide Mg-containing particles and Li-Mg in the protective layer as described above. Li ‘666 further discloses that the Mg-containing particles may be 50 weight% (para. [0023]) of with respect to all the active materials in the protective layer which are metal species which alloy with lithium (para. [0033]), anticipating the claimed range of 3:7 to 7:3 mass ratio. MPEP 2131.03.
Regarding claims 5-6, Li ‘666 discloses that a Li-Mg alloy is formed when the battery is charged at a constant current density is 435 µA/cm2 (para. [0072]). Furthermore, the conductivity of the solid electrolyte may range from 10-4 S/cm to 10-3 S/cm at 25 °C (para. [0054]). Therefore, the field potential of the electrochemical cell can be calculated as E1 = 435 µA/cm2 / 10-3 S/cm = 4.35 A/m2 / 10-1 S/m = 43.5 V/m and E2 = 435 µA/cm2 / 10-4 S/cm = 4.35 A/m2 / 10-2 S/m = 435 V/m. Furthermore, the thickness of the solid electrolyte layer may be 0.1 µm or more or 1000 µm or less (para. [0055]). Therefore, if the thickness of the solid electrolyte layer is 1000 µm then the voltage at which the LiMg alloy forms ranges from 0.0435 to 0.435 V. Therefore, the claimed voltage range for which a metal oxide forms an alloy with lithium is overlapped (0.4 V – 0.7 V) as well as the claimed range for which a metal forms an alloy with lithium (0.1 V - 0.3 V). MPEP 2144.05. Furthermore, para. [0052] of the specification lists magnesium oxide as a known metal oxide capable of alloying with lithium. Therefore, magnesium oxide may be configured to form an alloy with lithium in a higher voltage range than magnesium and within the claimed range of 0.4 V – 0.7 V.
Regarding claim 9, Li discloses that the thickness of the protective layer may range from 5 µm or more to 30 µm or less (para. [0027]), overlapping the claimed range of 1 µm to 20 µm. MPEP 2144.05.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US PG Pub 2022/0344666 A1) in view of Li (US PG Pub 2020/0343582 A1) and Choi (US PG Pub 2022/0166003 A1).
Li ‘666 and Li ‘582 are relied upon as described above.
Li ‘666 discloses Mg-containing oxide particles (para. [0021]) which may be a primary particle or secondary particle and that the average particle size, or D50, may be 800 nm or more or 5 µm or less (para. [0022]) overlapping the claimed range of 0.1 µm to 1 µm. MPEP 2144.05.
However, Li ‘666 fails to teach the size of the active material particles as well as the Mg-containing particles in the protective layer (see para. [0023]).
Choi teaches magnesium particles (para. [0059]) which may have a particle size of 10 nm to 2 µm (para. [0062]) overlapping the claimed range of 0.1 µm to 1 µm. MPEP 2144.05
Choi also teaches that particles with a D50 exceeding 2 µm may not react with lithium.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have used both oxide and metal particles with a D50 within the claimed range to promote the reaction with lithium and battery performance.
16. Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US PG Pub 2022/0344666 A1) in view of Choi (US PG Pub 2022/0166003 A1).
Li is relied upon as described above.
Regarding claim 10, Li teaches a method of manufacturing an all-solid-state battery, comprising forming a protective layer (para. [0013], ref. 6, Fig. 2) disposed on the anode current collector (para. [0013], ref. 2, Fig. 2), forming a solid electrolyte layer (para. [0013], ref. 5, Fig. 2) disposed on the protective layer, forming a cathode layer comprising a cathode active material layer (para. [0013], ref. 3, Fig. 2) disposed on the solid electrolyte layer and a cathode current collector (para. [0013], ref. 4, Fig. 2) disposed on the cathode active material layer.
Li fails to teach a method of preparing a slurry by mixing a metal oxide, a metal, a conductive material, and a binder.
Choi teaches a method of producing an all-solid-state battery comprising preparing a slurry of a carbon material, a magnesium-based particle containing magnesium, a magnesium compound, or a combination of the two, and a binder (para. [0019]). The magnesium compound may be MgO, a metal oxide (para. [0060]). Therefore, in one embodiment, the slurry comprises a conductive material, a metal, a metal oxide, and a binder.
Choi further teaches that the coating layer may contain a very high concentration of the magnesium-based particles (para. [0016]) and that the method involves using a solvent to prepare the slurry and allowing the coating to dry (para. [0072]). Furthermore, the binder is a thermoplastic such as PVDF (para. [0068]). It is known in the art that the use of a solvent allows a high degree of particle loading in a thermoplastic matrix.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have used the method of preparing a slurry as taught by Choi to prepare the coating layer of Li to allow for a high concentration of particles.
Regarding claim 11, Li further discloses that active materials may be included in the protective layer (para. [0023]) in addition to the Mg-containing particles, which may be a lithium alloy containing a metal capable of alloying with lithium such as Li-Mg (para. [0033]).
16. Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US PG Pub 2022/0344666 A1) in view of Choi (US PG Pub 2022/0166003 A1) and Li (US PG Pub 2020/0343582 A1).
Li ‘666 and Choi are relied upon as described above.
Regarding claim 12, Li ‘666 discloses that the protective layer may comprise Mg-containing particles which are oxide particles containing Mg and O such as a composite metal oxide, Mg-Li-O (para. [0021]). It is known in the art that the composite metal oxide Li-Mg-O results from charging the battery when MgO and Li ions react as evidenced by Li ‘582 (para. [0040]). Hence, Li ‘666 discloses a protective layer comprising MgO.
Regarding claim 13, the combination of Li ’666 and Li ‘582 teach a combination of oxide Mg-containing particles and Li-Mg in the protective layer as described above. Li ‘666 further discloses that the Mg-containing particles may be 50 weight% of with respect to all the active materials in the protective layer which are metal species which alloy with lithium (para. [0033]), anticipating the claimed range of 3:7 to 7:3 mass ratio. MPEP 2131.03.
Double Patenting
17. 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.
18. Claims 1-2, 4, 10 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 9-10 of U.S. Patent No. US 12,322,789 B2 (herein referred to as ‘789). in view of Choi (US PG Pub 2022/0166003 A1).
Claims 1 and 9 of ‘789 describe claim 1 of the instant application.
However, ‘789 fails to claim a cathode current collector.
Choi teaches an all-solid-state battery (title) comprising a cathode current collector (para. [0040], ref. 11, Fig. 1) disposed on the cathode active material layer (para. [0041], ref. 12, Fig. 1).
Choi also teaches the cathode current collector being an electrically conductive substrate (para. [0040]) and that lithium ions move from the cathode towards the anode side during charging (para. [0054]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have used a conductive material such as a cathode current collector in the battery of ‘789 as taught by Choi to connect to an external source and allow charging to occur.
Claim 5 of ‘789 describes claim 2 of the instant application.
Claim 1 of ‘789 describes claim 4 of the instant application.
Claim 10 of ‘789 describes claim 10 of the instant application.
However, ‘789 fails to claim the solid electrolyte, cathode, and cathode current collector layers claimed in claim 10 of the instant application.
Choi teaches a solid electrolyte layer (para. [0039], ref. 30, Fig. 1) disposed on the coating layer, a cathode active material layer (para. [0041], ref. 12, Fig. 1) which comprising a cathode active material disposed on the solid electrolyte layer and a cathode current collector (para. [0040], ref. 11, Fig. 1) disposed on the cathode active material layer.
The arrangement of a solid electrolyte between a cathode and anode is a well-known structure for lithium-ion batteries in the art. Choi also teaches the cathode current collector being an electrically conductive substrate (para. [0040]) and that lithium ions move from the cathode towards the anode side during charging (para. [0054]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have used a solid electrolyte layer between the anode and cathode material as well as a conductive material such as a cathode current collector in the battery of ‘789 as taught by Choi to connect to an external source and allow charging to occur.
Claim 10 of ‘789 describes claim 13 of the instant application.
Conclusion
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN ANDREW JON MCMULLEN whose telephone number is (571)270-0127. The examiner can normally be reached 7:30 am - 5:00 pm.
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/N.A.M./
Nathan A McMullen
Examiner, Art Unit 1788
08/07/2026
/AARON AUSTIN/Supervisory Patent Examiner, Art Unit 1782
Prosecution Insights