DETAILED ACTION
Response to Amendment
Amendments to the specification and claims have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Analysis
The Examiner notes that Applicants’ claims are directed to three distinct species:
an embodiment wherein the conformal polymer layer comprises only a polymer comprising one or more zwitterionic moieties;
an embodiment wherein the conformal polymer layer comprises only a fluorinated polymer; and
an embodiment wherein the conformal polymer layer comprises both a polymer comprising one or more zwitterionic moieties and a fluorinated polymer (the Examiner notes that this, third, embodiment is allowable over the prior art of record – see Reasons for Allowable Subject Matter, below).
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Election/Restrictions
Applicants’ arguments have been considered and are deemed convincing. The restriction requirement between Groups I and II is hereby vacated and all claims are examined herewith.
Claim Objections
Claims 10, 11 and 23 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 4, 12, 26, 27, 29 and 32 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 pre-AIA the applicant regards as the invention.
Regarding claim 4, the phrase "for example" (“e.g.”) 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). For the purpose of evaluating the prior art, the phase after “e.g.” has been considered optional.
Regarding claim 4, the phrase "for example" (“e.g.”) 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). For the purpose of evaluating the prior art, the phase after “e.g.” has been considered optional.
Regarding claim 12, it is unclear if the ‘hydrophobic fluoropolymer’ is the same fluoropolymer recited in claim 1 or a different fluoropolymer. Similarly, it is unclear if the ‘hydrophilic zwitterionic polymer” is the same “polymer containing one or more zwitterionic moieties” as recited in claim 1. For the purpose of evaluating the prior art, this claim has been interpreted as reciting: “wherein the fluorinated polymer is hydrophobic and the polymer containing one or more zwitterionic moieties is hydrophilic”.
Regarding claim 26, the phrase "for example" (“e.g.”) 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). For the purpose of evaluating the prior art, the phase after “e.g.” has been considered optional. The Examiner notes that this occurs twice in claim 26.
Regarding claim 26 (much like in claim 12), it is unclear if this claim is attempting to add additional polymers or further limiting those recited in claim 1. For the purpose of evaluating the prior art, the Examiner has taken this to be referring either to the polymers in claim 1 -or- additional polymers; e.g. one of the polymers from claim 1 could be the hydrophilic (or hydrophobic) one and an additional polymer, not recited in claim 1, could be the other.
Regarding claim 27, the phrase ‘caused by dewetting’ is deemed indefinite since phase separation and defects can be caused by many underlining sources and it would be next to impossible to ascertain if the sole source (or even ‘majority source’ of any phase separation was only attributed to ‘dewetting’. For the purpose of evaluating the prior art, this claim has been interpreted as simply reciting “…is free of phase separation and defects.”
Regarding claim 29, the phrase "for example" (“e.g.”) 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). For the purpose of evaluating the prior art, the phase after “e.g.” has been considered optional.
Regarding claim 32, the phrase "for example" (“e.g.”) 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). For the purpose of evaluating the prior art, the phase after “e.g.” has been considered optional. The Examiner notes that this occurs three times in this claim.
Claim Rejections - 35 USC § 102
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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 3, 8, 9, 12, 15, 18, 22, 24, 27 – 29 and 32 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Honda et al. (U.S. Patent App. No. 2020/0067097 A1).
Regarding claim 1, Honda et al. disclose an electrode (Title; Abstract) comprising a conformal polymer layer (ibid and see Paragraphs 0010 – 0015 and 0283 – 0285) disposed thereon, wherein the conformal polymer layer has a thickness of 3 to 10,000 nm (Paragraph 0285) and comprises a fluorinated polymer (Title; Abstract; and entire disclosure).
Regarding claim 2, Honda et al. teaches the claimed thickness ranges as noted above.
Regarding claim 3, these limitations are a product-by-process limitation and are not further limiting in so far as the structure of the product is concerned. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). However, in the instant case, Honda et al. disclose solvent-free techniques (Paragraphs 0272 – 0280) meeting the claimed limitations.
Regarding claims 8 and 9, Honda et al. disclose perfluorinated polymers meeting the claimed limitations (entire disclosure).
Regarding claim 12, absent evidence to the contrary, the Examiner deems that the various perfluorinated polymer compositions taught in the examples (especially), but also in the entire disclosure (e.g. Paragraphs 0019 – 0270) meet the claimed ‘hydrophobic’ limitations (evidenced by teachings of non-water solvents needed; e.g. see Paragraph 0274).
Regarding claim 15, Honda et al. disclose current collectors meeting the claimed limitations (see examples).
Regarding claim 18, Honda et al. disclose fluorinated groups meeting the claimed limitations (see citations above), noting that the linking group is both optional (x=0 means no linking group) and the exact linking group is not limited to those ‘optionally’ listed.
Regarding claim 22, Honda et al. discloses the claimed limitations, noting that m=0, (see citations above).
Regarding claim 24, Honda et al. does not teach that the layer is phase separated or has defects, so it necessarily meets the broad recitation of a ‘single homogeneous layer’.
Regarding claim 27, Honda et al. does not teach that the layer is phase separated or has defects, so it necessarily meets the broad recitation of a layer ‘free of phase separation and defects’.
Regarding claims 28 and 29, Honda et al. teach the claimed battery structure (at least Paragraph 0349 and examples).
Regarding claim 32, Honda et al. disclose the claimed solvent-free method as noted above (e.g. see Paragraphs 0272 – 0280).
Claim(s) 1 – 4, 12, 13, 15, 18, 22, 24 and 26 - 29 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kim et al. (U.S. Patent No. 12,062,771 B2 and the corresponding PGPUB ‘199 A1), as evidenced by Atienza (U.S. Patent App. No. 2020/0251737 A1) and Honda et al. (‘097 A1).
Claims 15 and 22 are only rejected under 35 U.S.C. 103(a).
Regarding claim 1, Kim et al. disclose an electrode (Title; Abstract) comprising a conformal polymer layer (ibid and see col. 5, lines 20 – 30) disposed thereon, wherein the conformal polymer layer has a thickness of 3 to 10,000 nm (col. 5, lines 45 - 63) and comprises a star polymer (Title; Abstract; and at least col. 6, line 17 bridging col. 7, line 24).
Kim et al. disclose that the star polymer can comprise zwitterionic moieties in/as the arms (col. 7, lines 11 – 24), which anticipates the claimed limitation. However, the Examiner acknowledges that Kim et al. discloses many possible embodiments for the arms and does not have an exact example using arms with zwitterionic moieties.
Therefore, alternative to anticipation, Kim et al. would still render obvious the claimed invention by teaching that arms without zwitterionic moieties and arms with zwitterionic moieties are functional equivalents in the disclosed star polymers for forming the coating layer.
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the various types of arms, including those with zwitterionic moieties, are functional equivalents in the field of suitable arms for the disclosed star polymers. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore (even if shown to not be anticipatory) have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Kim et al. to read on the claimed invention as taught by Kim et al., since it is merely substituting a known, functionally equivalent arm material for another.
Regarding claim 2, Kim et al. teaches the claimed thickness ranges as noted above.
Regarding claim 3, these limitations are a product-by-process limitation and are not further limiting in so far as the structure of the product is concerned. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). In the instant case, regardless of how the layer is formed, there is still a conformal polymer layer formed on the electrode.
Regarding claim 4, Kim et al. disclose zwitterionic moieties meeting the claimed limitations (col. 7, lines 11 – 24). The Examiner also notes that, in the battery arts, these classes of zwitterionic moieties are known to be beneficial as evidenced by Atienza (at least Paragraphs 0024 – 0030).
Regarding claim 12, absent evidence to the contrary, the Examiner deems that the various star polymer compositions taught in the examples and especially compositions having arms with zwitterionic moieties would meet the claimed ‘hydrophilic’ limitations due to the nature of the zwitterionic moieties.
Regarding claim 13, Kim et al. disclose cross-linking the star polymer layer to meet the claimed limitations (at least col. 6, lines 5 – 16).
Regarding claim 15, this claim is only rejected under 35 U.S.C. 103(a). The Examiner takes Official Notice that current collectors meeting the claimed limitations are ubiquitous in the battery arts and adding a current collector meeting the claimed limitations would have been routine an obvious to a skilled artisan. For support of this position of Official Notice regarding current collectors, see the various pertinent prior art cited herewith and the evidentiary art to Honda et al. (at least examples).
Regarding claim 18, this claim depends from claim 1 and is rejected as not requiring that the fluorinated polymer be present; i.e. it further modifies one of the species without mandating that said modified specie be selected. Should Applicants desire the layer in claim 18 to require the fluorinated polymer, they are recommended to amend claim 18 to depend from claim 8.
Regarding claim 22, this claim is only rejected under 35 U.S.C. 103(a). Kim et al. discloses the claimed limitations, noting that n=0, (see citations above) and, as noted above, the evidentiary art to Atienza (Paragraphs 0024 – 0030) supports the specific zwitterionic moieties as conventional in the battery arts. It would have been obvious to a skilled artisan to meet the claimed limitations should the arms containing zwitterionic moieties embodiment be utilized.
Regarding claim 24, Kim et al. does not teach that the layer is phase separated or has defects, so it necessarily meets the broad recitation of a ‘single homogeneous layer’.
Regarding claim 26, Kim et al. teach hydrophobic cores (col. 6, lines 17 – 29) and the Examiner deems the disclosed arms necessarily meet the claimed hydrophilic polymer requirements for similar reasons set forth above with regard to claim 12. As such, the star polymers of Kim et al. are deemed to meet the claimed limitations of claim 26.
Regarding claim 27, Kim et al. does not teach that the layer is phase separated or has defects, so it necessarily meets the broad recitation of a layer ‘free of phase separation and defects’.
Regarding claims 28 and 29, Kim et al. teach the claimed battery structure (at least Figure 1 and col. 3, lines 35 - 44).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claims 10, 11 and 23 are deemed allowable over the prior art of record (and the third embodiment of claim 1, as discussed above).
Regarding claims 10 and 11, while the prior art of record recognizes fluorinated polymer layers for a variety of purposes, none of the prior art references teach or suggest the specific formulas for the fluorinated polymers conformal to an electrode. As such, the Examiner deems that these specific formulas for the fluorinated layer as allowable over the prior art of record (noting that claim 8 requires that the conformal polymer coating includes the fluorinated layer).
Regarding claim 23 (and the embodiment of claim 1 should it be amended to recite “… one or more zwitterionic moieties [and/or] and a fluorinated polymer.”) because the prior art fails to teach or render obvious a conformal polymer layer comprising both a polymer including at least one zwitterionic moiety and a fluorinated polymer. While the prior art recognizes constructs with polymers having zwitterionic moieties mixed with other polymers (e.g. see Atienza), there is no teaching or suggestion of blending or mixing with a fluorinated polymer. Similarly, while the prior art recognizes fluorinated polymer coatings for many purposes (protective or aiding in lithium ion migration, etc.), none of these references teach or suggest blending or mixing with a polymer having one or more zwitterionic moieties.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
August 20, 2026
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