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
Claim 34 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, drawn to a negative electrode, there being no allowable generic or linking claim. Election was made without traverse of Group I drawn to an electrode drawn to claims 1-3,5-13, and 27-33 in the reply filed on 07/09/2026.
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 6, 8, and 12 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.
Regarding claims 6 and 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 12 recites the limitation “polyethylene glycol (PEG) polymethyl methacrylate (PMMA)” it is unclear if the dash between is supposed to be a comma or if the dash between represents a copolymer or a blended polymer. Further clarification and appropriate correction is required.
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.
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.
Claim(s) 1, 2, 5-9, 12, 13, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1).
Regarding claims 1 and 6, He discloses a metal electrode (See Fig. 1 cathode or anode can have protective layer [0061]-[0063]) for an energy storage device (Fig. 1 [0055][0059][0088]) having a composite of boron nitride ([0041][0029][0030]) and that the material can be provided in the form of nanotubes ([0074]) and at least one polymeric binder ([0033]-[0036][0029][0030]), wherein a coating of the composite intimately contacts at least one surface of the electrode as a porous mesh ([0030][0078][0079]) which is selectively permeable to transport metal ions used in the energy storage device, wherein the composite is physically and/or chemically bonded to the surface of the electrode ([0030]).
He discloses first or second inorganic material can be boron nitride and also can be form of nanotubes ([0074][0041]) and discloses that the first and second inorganic material and also that the protective layer which comprises these materials are heat resistant.
Kim discloses that boron nitride nanotubes provide excellent thermal stability, mechanical strength, and reduced weight when used in combination with a polymeric binder ([0002]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the first and/or second inorganic material by using boron nitride nanotube preferably over the other types of inorganic materials listed in the protective layer of He because Kim discloses that boron nitride nanotubes provide excellent thermal stability, mechanical strength, and reduced weight when used in combination with a polymeric binder.
It is noted that Applicant’s specification (please see USPGPub of instant application for mapping US 20240145727 A1) indicates that the porous mesh is formed by casting a solvent-based slurry of the BNNTs and binder onto the electrode surface and evaporating the solvent to form the composite BNNT/binder porous network/deposit ([0066]). He discloses that the protective film is formed by dispersion or dissolution of particles of inorganic species and a lithium ion-conducting polymer in a solvent to form a solution or suspension, followed by casting or coating into a preferably film or sheet form, and solvent removal ([0078][0120]). Since the protective film of He is formed in substantially same method and comprises the same materials as disclosed by the instant specification, the protective film of He will also have the same “porous mesh” structure.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 2, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses that the protective film is formed by dispersion or dissolution of particles of inorganic species and a lithium ion-conducting polymer in a solvent to form a solution or suspension, followed by casting or coating into a preferably film or sheet form, and solvent removal ([0078][0120]) and therefore the mesh will have the property of “configured to homogeneously distributes metal transport ions traversing the mesh across an entire surface of the metal electrode thereby reducing metal dendrite formation” since this method of formation of the mesh is substantially the same as noted in above rejection of claim 1.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 5, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses wherein strands of BNNTs are not completely conformally coated with the polymeric binder ([0079]).
Regarding claims 7 and 27, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses wherein the metal is lithium ([0063][0106]).
Regarding claim 8, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses that the polymeric binder can be in a percentage between 1 to 80% of the volume of the protective layer ([0037]).
However, He does not explicitly disclose wherein the coating of the composite comprises the polymeric binder at a concentration of about 50 wt% or less.
It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding claim 9, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses that the protective film is formed by dispersion or dissolution of particles of inorganic species and a lithium ion-conducting polymer in a solvent to form a solution or suspension, followed by casting or coating into a preferably film or sheet form, and solvent removal ([0078][0120]) and therefore the mesh will have the property of “wherein the BNNT porous mesh comprises one or more of tunnels, pathways and/or channels therethrough, directed, orientated and/or dimensioned to delocalized or redistribute a concentrated metal ion flux on one side of the mesh to a more uniformly distributed metal ion flux on the other side of the porous network/mesh, whereby the metal ion flux is thereby distributed across a greater surface area of the electrode.” since this method of formation of the mesh is substantially the same as noted in above rejection of claim 1.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 12, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses that the polymeric binder is selected from poly(vinylidene fluoride-co-hexafluoropropene (PVDF-HFP), polymethyl methacrylate (PMMA), and poly (dimethylsiloxane) (PDMS) ([0072]).
Regarding claim 13, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses wherein the metal is deposited on a current collector which is selected from carbon cloth, carbon fibre, and copper foil ([0106]-[0108]).
Claim(s) 10-12 and 28-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1) as applied to claims 1, 2, 5-9, 12, 13, and 27 above and in further view of Yun (US 20200058942 A1).
Regarding claims 10, 28, 29, and 30, modified He discloses all of the claim limitations as set forth above.
However, He does not explicitly disclose that the composite has an average thickness of:
from about 1 micron to about 50 microns (claim 10)
from about 2 microns to about 25 microns (claim 28)
from about 3 microns to about 10 microns (claim 29)
has an average thickness of from about 1.5 microns to about 7.5 microns, or about 5 microns (claim 30)
He discloses that the composite thickness can be in the range of 10 nm to 100 microns ([0024][0026]).
Yun discloses that thermally conductive particles in a protective layer should be optimized for limiting dendrite growth due to heat distribution [0052] and the thermally conductive particles can comprise boron nitride ([0023]) and the thickness of the protective layer should have a range of approximately 1 to 5 microns ([0055]) to optimize inhibiting lithium dendrite growth and also not result in battery deterioration.
It would have been obvious to one of ordinary skill in the art at the time of the filing to modify the thickness of the protective layer of modified He to be within the claimed range because He discloses an overlapping range and because Yun discloses that having the claimed range will be lead to an optimally inhibiting lithium dendrite growth and also not result in battery deterioration.
Regarding claims 11, 31, and 32, modified He discloses all of the claim limitations as set forth above.
He discloses that the binder amount is preferably in the range of 1%-80% volume ([0037]) and therefore the remainder 99%-20% volume is the first or second inorganic particles.
However, He does not disclose the following:
wherein the coating of the composite has an areal density or BNNT loading of from about 0.2 mg cm-2 to about 8 mg cm-2 (claim 11)
wherein the coating of the composite has an areal density or BNNT loading of from about 0.1 mg cm-2 to about 2 mg cm-2 (claim 31)
wherein the coating of the composite has an areal density or BNNT loading of about 0.4 mg cm-2 (claim 32)
Yun discloses that the amount of thermally conductive particles in a protective layer should be optimized for limiting dendrite growth due to heat distribution [0052] and the amount contained is related to improving battery life [0101].
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the amount of loading of the thermally conductive BNNT in the protective layer of He to have the above claimed areal density because Yun discloses that the amount of loading can be optimized for limiting dendrite growth due to heat improving battery life.
Regarding claims 12 and 33, modified He discloses all of the claim limitations as set forth above.
In addition, He discloses sulfonated styrene-butadiene copolymers [0069] and a variety of other types of polymers [0072] that can be used for the polymer binder, however does not disclose poly(styrene-co-butadiene).
Yun discloses that a polymer binder ([0066]) that is used in a protective layer ([0065]) which also comprises boron nitride ([0051]) thermally conductive filler can be styrene-butadiene rubber (SBR) or PVDF or PMMA.
It would have been obvious to one of ordinary skill in the art at the time of filing to replace the polymeric binder of He with the styrene-butadiene rubber of Yun because Yun discloses that this type of polymeric binder is used with a thermally conductive ceramic filler to form a protective layer on an electrode in a battery.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over He (US 20190372148 A1) in view of Kim (US 20220166108 A1) as applied to claims 1, 2, 5-9, 12, 13, and 27 above and in further view of Ikeda (US 20110189546 A1).
Regarding claim 3, modified He discloses all of the claim limitations as set forth above.
However, He does not disclose wherein at least a portion of the polymer binder is present as particulates which fix strands of the BNNTs together to form the porous network or porous mesh.
Ikeda discloses a method of forming a protective layer on an electrode layer wherein the protective layer is a mixture of thermally conductive filler and polymeric binder, the binder can be provided in powdered form ([0078]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the formation of the protective layer of modified He by providing the polymeric binder in powder form as disclosed by Ikeda because Ikeda discloses that this an appropriate method for forming a protective layer on an electrode layer which comprises a mixture of thermally conductive filler and polymeric binder.
Since the method of Ikeda is heated to fix insulating filler the following structure “wherein at least a portion of the polymer binder is present as particulates which fix strands of the BNNTs together to form the porous network or porous mesh” is present in modified He.
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.
Claims 1-3, 5-13, and 27-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 26-29 of copending Application No. 18550771 in view of He (US 20190372148 A1) in view of Yun (US 20200058942 A1). Claims 1-15 and 26-29 of copending Application No. 18550771 recited substantially the same electrode as recited in claims 1-3, 5-13, and 27-33 of the instant application with the exception of the electrode is lithium or that the binder is poly(styrene-co-butadiene). He discloses that a protective layer which comprises boron nitride that can be in the form of nanotubes as a filler and a polymeric binder can be applied to a Li-S battery to either the anode or cathode (please see rejection of claim 1 for more detail and [0026][0029][0041][0106]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the electrode of claims 1-15 and 26-29 of copending Application No. 18550771 to be a lithium metal as disclosed by He because He discloses a protective layer can also be applied to Li electrode in a similar manner as it was applied to a sulfur electrode.
Yun discloses that a polymer binder ([0066]) that is used in a protective layer ([0065]) which also comprises boron nitride ([0051]) thermally conductive filler can be styrene-butadiene rubber (SBR) or PVDF or PMMA.
It would have been obvious to one of ordinary skill in the art at the time of filing to replace the polymeric binder of 1-15 and 26-29 of copending Application No. 18550771 with the styrene-butadiene rubber of Yun because Yun discloses that this type of polymeric binder is used with a thermally conductive ceramic filler to form a protective layer on an electrode in a battery.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVINA PILLAY whose telephone number is (571)270-1180. The examiner can normally be reached Monday-Friday 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T Barton can be reached at 517-272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVINA PILLAY
Primary Examiner
Art Unit 1726
/DEVINA PILLAY/Primary Examiner, Art Unit 1726
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