DETAILED ACTION
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
Applicant’s election without traverse of claims 1-28 in the reply filed on 20 May, 2026 is acknowledged.
Claims 29-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 May, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements submitted on 15 November 2023, 27 December, 2023, 3 October 2025 and 9 April 2026 have been considered by the examiner.
Claim Objections
Claim 2 is objected to because of the following informalities: the semi-colons should be replaced by commas.
Claim 4 is objected to because of the following informalities. The claim recites the limitation “10-10 Scm-1”. The limitation should be edited to read: “10-10 S cm-1” to reflect proper superscripting.
Claim 6 is objected to because of the following informalities:
a period is missing at the end of the claim.
the limitations “Li3BO3” and “Li3-xB1-xCxO3” should be edited to read “Li3BO3” and “Li3-xB1-xCxO3” to reflect proper subscripting.
Claim 14 is objected to because of the following informalities. Lines 6-7 of the claim read in part: “such a part of the first portion”.
The limitation should be edited to read: “such that a part of the first portion”.
Claim 25 is objected to because of the following informalities. Lines 2-3 of the claim read in part: “a component according to the method of claim 1 claims, wherein…”.
The word “claims” is unnecessary and should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 3-6 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “a battery cell”, and the claim also recites “a solid state battery cell” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 7 and 8 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 7 recites the limitation "the step … of securing the sheet to a substrate" lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claims 9-15 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 9 recites the limitation "the step … of " lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claims 12 and 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 12 recites the limitation "the further steps" lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claims 14 and 15 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 14 recites the limitation "the further steps" lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites the limitation "the further steps" line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 28 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 28, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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, 7-9, 16-18, 20, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2011/0236798, hereinafter Burchardt.
Regarding claim 1, Burchardt teaches a method of making an air electrode (“component”) for a metal-air battery (“energy storage device”) (paragraphs [0272-0278]).
The method includes the following steps:
a step of providing a mesh current collector (“sheet having a plurality of through-thickness apertures”) (paragraph [0273]);
a step of forming a slurry comprising particles of a ceramic material (paragraphs [0082, 0086, 0087, 0274]);
a step of depositing the slurry onto the mesh current collector (“sheet having a plurality of through-thickness apertures”) (paragraph [0274]);
a step of sintering at a temperature in the range 200°C to 320°C (paragraph [0274]).
Burchardt’s optimum range overlaps the instant application's optimum range of 300°C to 900°C. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 2, Burchardt teaches that the ceramic material is an active material (paragraph [0086]).
Regarding claim 3, Burchardt teaches that the component is an electrode for a metal-air battery (“energy storage device”) (paragraph [0272]). The ceramic material is an electrode active material (paragraph [0086]).
Regarding claim 7, Burchardt teaches that prior to the step of depositing the slurry, the mesh current collector (“sheet having a plurality of through-thickness apertures”) is secured to an extruder (“substrate”) (paragraph [0274]).
In an alternative embodiment, Burchardt teaches first coupling the mesh current collector (“sheet having a plurality of through-thickness apertures”) to a gas diffusion layer (“substrate”) and subsequently applying the slurry of active material onto the mesh current collector (“sheet having a plurality of through-thickness apertures”) (paragraph [0113]).
Regarding claim 8, Burchardt teaches that the gas diffusion layer (“substrate”) includes polymer-based binding agents (40, “adhesive”) (paragraphs [0082, 0083]). The polymer-based binding agents (40, “adhesive”) secure the mesh current collector (“sheet having a plurality of through-thickness apertures”) to the gas diffusion layer (“substrate”) (paragraphs [0084]).
Regarding claim 9, Burchardt teaches in an embodiment that the slurry may be deposited by a screen-printing or masking method (paragraphs [0118, 0121, 0122, 0175]).
The method includes providing a support surface (e.g., the bed of a flat-bed screen printing press) and a stencil (“mask”) (paragraphs [0132, 0138]). The stencil (“mask”) includes at least one open portion (“window”) (paragraph [0133]).
The method includes placing the mesh current collector (“sheet having a plurality of through-thickness apertures”) between the support surface and the stencil (“mask”) so that a first face of the mesh current collector (“sheet having a plurality of through-thickness apertures”) faces the stencil (“mask”) (paragraph [0136]). A first portion of the mesh current collector (“sheet having a plurality of through-thickness apertures”) is shielded by coating-blocking material of the stencil (“mask”) and a second portion is exposed through the open portion (“window”) (paragraphs [0133, 0135]).
Burchardt intends for subsequent coating layers, so it is understood that the stencil (“mask”) is reversibly secured to the support surface (paragraph [0137]).
Regarding claim 16, Burchardt teaches in an embodiment that the slurry may be deposited by a screen-printing method (paragraphs [0118, 0121, 0122]).
Regarding claim 17, Burchardt teaches a mesh current collector (“sheet having a plurality of through-thickness apertures”). Current collectors are electrically conductive.
Regarding claim 18, Burchardt teaches that the mesh current collector comprises a metal (paragraph [0077]).
Regarding claim 20, Burchardt teaches that the slurry includes active material such as MnO2 and polymeric binders (paragraphs [0082, 0083, 0086]).
Therefore, within the scope of Burchardt’s disclosure is a slurry that includes 0 vol% solid electrically conductive material.
Regarding claim 27, Burchardt teaches an air electrode (“component”) for a metal-air battery cell (“energy storage device”) formed by the method of claim 1 (paragraph [0272]).
Regarding claim 28, Burchardt teaches that the component is an electrode for a metal-air battery cell (paragraph [0272]).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2011/0236798, hereinafter Burchardt as applied to claim 9 above and further in view of U.S. Pre-Grant Publication No. 2014/0007418, hereinafter Song.
Regarding claims 10 and 11, Burchardt teaches that the slurry is deposited by a screen-printing or masking method (paragraphs [0118, 0121, 0122, 0175]).
Burchardt fails to teach that the mask is reversibly secured to the support surface using a magnetic material.
It is well-known in the art to use backside magnets to secure a mask to a substrate during pattern deposition of electrode material – see, e.g. Song (paragraph [0031]). Securing using magnets is a reversible operation.
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to use backside magnets to secure the mask to the support substrate in Burchardt’s method for the purpose of ensuring that the mask is securely attached and thus ensuring precise deposition of the slurry.
The use of magnets would necessarily require that the opposing surface is magnetized. In the combination of Burchardt and Song, one of the mask and support surface would have the magnet and the other would be magnetized.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2011/0236798, hereinafter Burchardt as applied to claim 9 above and further in view of U.S. Pre-Grant Publication No. 2018/0114986, hereinafter Baek.
Regarding claim 12, Burchardt teaches that the slurry may be deposited by a screen-printing method (paragraphs [0118, 0121, 0122]). The method includes placing the mesh current collector (“sheet having a plurality of through-thickness apertures”) between a support surface and a stencil (“mask”) and depositing the slurry via the stencil (“mask”) onto a first face of the mesh current collector (“sheet having a plurality of through-thickness apertures”) (paragraphs [0133, 0135, 0136]).
Burchardt teaches, in an embodiment, a bifunctional air electrode (“component”), which has an active material layer on both sides of the mesh current collector (paragraph [0277]).
Burchardt fails to teach the steps of reversing the mesh current collector, placing the stencil (“mask”) over the mesh current collector and depositing additional slurry onto a second face, opposite the first face, of the mesh current collector (“sheet having a plurality of through-thickness apertures”).
Successively coating opposite sides of a current collector with active material slurry layers by first coating one side, reversing the current collector and then coating the opposite side is a known practice in the art – see, e.g. Baek (paragraphs [0050, 0052] and figure 2).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to use Burchardt’s screen-printing method to apply additional active material slurry to the second side of the mesh current collector for the purpose of forming the bifunctional air electrode having an active material layer on both sides of the mesh current collector.
Applying the screen-printing method to the second face following application to the first face would necessarily require detaching the stencil (“mask”), reversing the mesh current collector so that the first face faces towards the support surface, placing the stencil (“mask”) over the mesh current collector, reversibly securing the stencil (“mask”) to the support surface and depositing additional slurry comprising ceramic active material particles onto a portion of the second face.
Regarding claim 13, Burchardt teaches that the two active material layers may have the same thickness (paragraph [0277]). This corresponds to a ratio of 1.
Regarding claim 14, Burchardt teaches that the slurry may be deposited by a screen-printing method (paragraphs [0118, 0121, 0122]). The method includes placing the mesh current collector (“sheet having a plurality of through-thickness apertures”) between a support surface and a stencil (“mask”) and depositing the slurry via the stencil (“mask”) onto a first face of the mesh current collector (“sheet having a plurality of through-thickness apertures”) (paragraphs [0133, 0135, 0136]).
Burchardt teaches, in an embodiment, a bifunctional air electrode (“component”), which has an active material layer on both sides of the mesh current collector (paragraph [0277]).
Burchardt fails to teach the steps of bending the mesh current collector so that the first portion overlies the deposited slurry, placing the stencil (“mask”) over the mesh current collector such that a part of the first portion of the sheet is exposed through the window of the mask and depositing additional slurry onto the exposed part of the first portion of the mesh current collector (“sheet having a plurality of through-thickness apertures”).
Successively coating opposite sides of a current collector with active material slurry layers by first coating one side and then coating the opposite side is a known practice in the art – see, e.g. Baek (paragraphs [0050, 0052] and figure 2).
It would have been within the purview of the ordinarily skilled artist before the effective filing date of the claimed invention to select to bend the mesh current collector for the purpose of coating its opposite side and thus achieving a thicker electrode having a current collector physically interfacing with multiple portions of the active material for the purpose of improving the capacity and conductivity of the electrode.
Applying the screen-printing method to a part of the first portion following application to the first face would necessarily require detaching the stencil (“mask”), bending the mesh current collector so that a part of the first portion overlies the deposited slurry, reversibly securing the stencil (“mask”) to the support surface so that a part of the first portion is exposed and depositing a further quantity of slurry comprising ceramic active material particles onto a part of the first portion.
Regarding claim 15, it would have been within the purview of the ordinarily skilled artist before the effective filing date of the claimed invention to bend the mesh current collector a second time for the purpose of applying an additional coating of active material and forming an ever thicker electrode having a current collector physically interfacing with multiple portions of the active material for the purpose of improving the capacity and conductivity of the electrode.
Applying the screen-printing method to a further part of the first portion following application to the part of the first portion would necessarily require detaching the stencil (“mask”), bending the mesh current collector so that a further part of the first portion overlies the further quantity of slurry, reversibly securing the stencil (“mask”) to the support surface so that the further part of the first portion is exposed and depositing still additional slurry comprising ceramic active material particles onto the further part of the first portion.
Claims 19 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2011/0236798, hereinafter Burchardt as applied to claims 18 and 1 above and further in view of U.S. Pre-Grant Publication No. 2017/0244106, hereinafter Mortensen.
Regarding claim 19, Burchardt teaches a metal mesh current collector for the air electrode of a metal-air battery (paragraph [0077]).
Burchardt fails to teach the material of the metal mesh current collector.
Mortensen teaches a metal mesh current collector for a metal-air battery (abstract). The metal mesh current collector is formed of an iron alloy with high tensile strength for the purpose of reducing buckling (paragraphs [0025, 0028]).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to select an iron alloy as the material of the metal mesh current collector for the purpose of forming a metal mesh current collector with reduced buckling and improved performance.
Regarding claims 22 and 23, Burchardt teaches a metal mesh current collector for the air electrode of a metal-air battery (paragraph [0077]).
Burchardt fails to specify that the mesh is woven and the number of strands per cm.
Mortensen teaches a woven metal mesh current collector for a metal-air battery (abstract, paragraph [0044]). The woven metal mesh current collector has a mesh count in the range 16 x 16 wires per inch to about 60 x 60 wires per inch (paragraph [0041]). This range corresponds to 6 wires (“strands”) per cm to 23 wires (“strands”) per cm when measured in a direction perpendicular to the wires (“strands”).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to select a woven metal mesh as this is a customary choice in the art and to select a count in the range of 6 wires (“strands”) per cm to 23 wires (“strands”) per cm for the purpose achieving sufficient electrical conductivity of the current collector.
Regarding claim 24, Burchardt teaches a metal mesh current collector for the air electrode of a metal-air battery (paragraph [0077]).
Burchardt fails to teach the width of the apertures.
Mortensen teaches a metal mesh current collector for a metal-air battery (abstract). The woven metal mesh current collector has a mesh count in the range 16 x 16 wires per inch to about 60 x 60 wires per inch (paragraph [0041]) and a wire thickness of 5 µm to 20 µm (paragraph [0048]). Based on this information it is possible to compute the width of the corresponding apertures.
For example, selecting a mesh count of 40 x 40 wires per inch and a wire thickness of 10 µm results in apertures with a width of 625 µm. (For a 40 x 40 mesh count, there are 40 apertures per inch; 40 x 10 µm = 400 µm of total metal per inch; 25,400 µm – 400 µm = 25,000 µm of total aperture space; 25,000 µm/ 40 apertures = 625 µm per aperture).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to select a mesh count in the range 16 x 16 wires per inch to about 60 x 60 wires per inch and a wire thickness of 5 µm to 20 µm for the purpose of achieving a sufficient conductivity and robustness of the current collector. Such a selection of mesh count and wire thickness would result in overlapping ranges for the aperture widths.
The optimum range for the width of the apertures overlaps the instant application's optimum range of 10 µm to 1,000 µm. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2011/0236798, hereinafter Burchardt as applied to claim 1 above and further in view of U.S. Pre-Grant Publication No. 2007/0111095, hereinafter Padhi.
Regarding claim 21, Burchardt teaches that the air electrode includes particles of ceramic active material such as MnO2 (paragraph [0086]).
Burchardt fails to teach a particle size for the ceramic active material.
Padhi teaches an air electrode for a metal-air battery (abstract). The air electrode includes MnO2 active material with a particle size in the range 10 nm to 50 µm (paragraph [0037]).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to select a particle size in the range 10 nm to 50 µm for the active material in Burchardt’s electrode without undue experimentation and with a reasonable expectation of success as this is a customary size for the same type of particles used for the same purpose in the art.
Claims 1-3, 16-21, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2017/0179521, hereinafter Sakamoto in view of U.S. Pre-Grant Publication No. 2019/0372155, hereinafter Yersak.
Regarding claim 1, Sakamoto teaches a method of making an electrode (“component”) for a solid-state battery cell (“energy storage device”) (abstract, paragraph [0014]).
The method includes the following steps:
a step of providing a current collector (“sheet”) (paragraph [0041]);
a step of forming a slurry comprising particles of a ceramic material (paragraphs [0029, 0030, 0032, 0033]);
a step of depositing the slurry onto the current collector (“sheet”) (paragraph [0041]);
a step of sintering at a temperature in the range 600°C to 1000°C (paragraph [0043]).
Sakamoto fails to teach that that the current collector (“sheet”) has through-thickness apertures.
The use of mesh or grid current collectors in solid-state battery cells is well-known in the art – see, e.g. Yersak who teaches applying an active material slurry to a mesh or grid current collector, followed by sintering the slurry to form the electrode (paragraph [0060]).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to use a mesh or grid current collector (“sheet having a plurality of through-thickness apertures”) in Sakamoto’s solid state battery for the purpose of forming a more intimate connection between the current collector and active material layer and thus improving the conductivity of the electrode.
Sakamoto’s optimum range for the sintering temperature overlaps the instant application's optimum range of 300°C to 900°C. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 2, Sakamoto teaches that the ceramic material is an active material (paragraphs [0029, 0030, 0032, 0033]).
Regarding claim 3, Sakamoto teaches that the component is an electrode for a solid state battery cell (“energy storage device”) (abstract). The ceramic material is an electrode active material (paragraphs [0029, 0030, 0032, 0033]).
Regarding claim 16, Sakamoto teaches that the slurry is deposited on the current collector (“sheet”) by means of a tape-casting process (paragraph [0041]).
Regarding claim 17, Sakamoto as modified by Yersak teaches a mesh or grid current collector (“sheet having a plurality of through-thickness apertures”) (Yersak’s paragraph [0060]). Current collectors are electrically conductive.
Regarding claims 18 and 19, Sakamoto as modified by Yersak teaches that the mesh or grid current collector comprises iron or steel (Sakmoto’s paragraph [0041]).
Regarding claim 20, Sakamoto teaches that the slurry includes ceramic active material, polymeric binder, dispersant, plasticizer and solvent (paragraphs [0032, 0033, 0035-0038] and Tables 2 and 3). The slurry composition includes 0 vol% solid electrically conductive material.
Regarding claim 21, Sakamoto teaches that the ceramic material has an average particle size in the range 1 nm to 500 µm (paragraph [0030]).
Sakamoto’s optimum range overlaps the instant application's optimum range for the D50 particle size of 10 nm to 50 µm. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 27, Sakamoto teaches an electrode (“component”) for a solid state battery cell (“energy storage device”) formed by the method of claim 1 (paragraph [0014]).
Regarding claim 28, Sakamoto teaches that the component is an electrode for a solid state battery cell (abstract).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2017/0179521, hereinafter Sakamoto in view of U.S. Pre-Grant Publication No. 2019/0372155, hereinafter Yersak as applied to claim 3 above and further in view of over U.S. Pre-Grant Publication No. 2022/0320503, hereinafter Takano.
Regarding claims 4-6, Sakamoto teaches that the slurry includes an inorganic sintering aid assisting in the formation of lithium boron oxide (paragraph [0034]).
Sakamoto fails to teach one of the instantly claimed compounds as a sintering aid in the slurry.
The use of Li3BO3 as a sintering aid in a slurry used for the formation of an electrode of a solid state battery cell is well-known in the art – see, e.g Takano (paragraphs [0096, 0097, 0120, 0125, 0211, 0212, 0255, 0259]).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to use the compound Li3BO3 as the sintering aid in Sakamoto’s slurry without undue experimentation and with a reasonable expectation of success as the compound is known to be used in the art for the same purpose.
The sintering aid Li3BO3 is the instantly claimed ionically conductive material – it is therefore understood to have an ionic conductivity of greater than 10-10 Scm-1 and a melting point of less than 900°C.
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-Grant Publication No. 2017/0179521, hereinafter Sakamoto in view of U.S. Pre-Grant Publication No. 2019/0372155, hereinafter Yersak as applied to claim 1 above and further in view of over U.S. Pre-Grant Publication No. 2016/0043429, hereinafter Hatta.
Regarding claim 25, Sakamoto teaches a method of forming a battery cell. The method includes forming the electrode (“component”) comprising ceramic active material particles as claimed in claim 1 (paragraphs [14, 0029, 0030, 0032, 0033]).
The method further includes a step of depositing a solid state electrolyte layer (“further battery layer”) on the electrode (paragraph [0124]).
Sakamoto does not explicitly teach a step of fixing the electrode to a substrate.
It is well-known in the art to fix an electrode lead (“substrate”) to an electrode current collector for the purpose of extracting current from the battery – see, e.g. Hatta, who teaches spot welding an electrode lead (51, “substrate”) to the current collector (53A) of an electrode (53) of a solid-state battery (paragraph [0053]).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to fix an electrode lead (“substrate”) to the current collector in Sakamoto’s electrode for the purpose of being able to extract current from the battery.
Regarding claim 26, Sakamoto as modified by Hatta teaches that the electrode is spot welded to the electrode lead (“substrate”) (Hatta’s paragraph [0053]).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 and 30 of copending Application No. 18/553,235 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 18 and 30 of the reference application anticipate instant claim 1. Specifically the boiling points of acetic acid (118°C), dimethylformamide (153°C) and benzyl alcohol (205°C) would place the sintering temperatures claimed in claims 18 and 30 of the reference application within the claimed sintering temperature range of instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/LILIA NEDIALKOVA/Examiner, Art Unit 1724
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