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
Claims 11-14 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/15/2026.
Applicant’s election without traverse of Group I (Claims 1-10) in the reply filed on 07/15/2026 is acknowledged.
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 1-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-10 of copending Application No. 17928977 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-3 and 5-10 of 17928977 disclose the subject matter of Claims 1-10 of the instant application 18575747 as given below.
Regarding Claim 1 (18575747), Claim 1 of 17928977 discloses:
An all-solid-state battery comprising: a positive electrode; a negative electrode; and a solid electrolyte between the positive electrode and the negative electrode, wherein the solid electrolyte is constituted by a first solid electrolyte layer comprising a binder and a second solid electrolyte layer not comprising a binder, and wherein the second solid electrolyte layer faces the negative electrode (An all-solid-state battery comprising: a positive electrode; a negative electrode; and a solid electrolyte between the positive electrode and the negative electrode, wherein the solid electrolyte comprises a first solid electrolyte layer and a second solid electrolyte layer, wherein the first solid electrolyte layer comprises a binder, wherein the second solid electrolyte layer does not have a binder… and wherein the second solid electrolyte layer faces the negative electrode.).
Regarding Claim 4 (18575747), Claim 1 of 17928977 discloses:
wherein a thickness of the first solid electrolyte layer is equal to or greater than a thickness of the second solid electrolyte layer (wherein the first solid electrolyte layer has a thickness greater than a thickness of the second solid electrolyte layer).
Claims 2-3 and 5-10 of 18575747 are substantially similar to those of 17928977.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 3 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 3 recites:
wherein ingredients of the first solid electrolyte layer and the second solid electrolyte layer are identical to each other
The claim is indefinite because it is unclear as to whether ingredients refers to the materials used in the preparation of the first and second solid electrolyte layers or final products of the first and second solid electrolyte layers. Further, the instant specification does not provide information to one having ordinary skill in the art to ascertain what is meant by ingredients.
Claim 3 recites:
wherein ingredients of the first solid electrolyte layer and the second solid electrolyte layer are identical to each other excluding the binder.
The phrase “excluding the binder” is unclear because this could be interpreted as the first and second electrolyte layer both having binders merely with different “ingredients” which is contradictory to the requirements of Claim 1. Contradictory claims do not clearly set forth the metes and bounds of the patent protection desired. The claim(s) are considered indefinite because there is a question or doubt as to which of the contradictory features are required by the claim(s). The Examiner suggest “excluding the presence of the binder.”
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.
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.
Claim(s) 1-4, 6, and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US-20240047734-A1) with evidence provided from Lee et al. (US-20240429436-A1.
Regarding Claim 1, Li teaches:
An all-solid-state battery comprising (solid state battery, see [0004]):
a positive electrode; a negative electrode; and a solid electrolyte between the positive electrode and the negative electrode (“a rechargeable battery including a) an anode and a cathode and b) a solid state electrolyte multilayer disposed between the anode and the cathode including: i) a first solid state electrolyte and ii) a second solid state electrolyte,” see [0005]),
Li does not necessarily teach:
wherein the solid electrolyte is constituted by a first solid electrolyte layer comprising a binder and a second solid electrolyte layer not comprising a binder,
However, Li discloses the “the first and/or second solid electrolytes include a polymer,” see [0010]. Li lists suitable polymers include polyethylene oxide, polyvinylidene fluoride, poly(vinylidene fluoride-co-hexafluoropropylene), poly(ethyl methacrylate), or poly(vinylidene fluoride-co-trifluoroethylene), see [0092]. All of the suitable polymers listed by Li are recognized in the instant specification as binders, see instant-spec. [23] The disclosure of Li indicates the following possible embodiments are contemplated; 1) the first and second solid electrolytes include polymer, 2) the first solid electrolyte includes polymer, and the second solid electrolyte does not include polymer, 3) the second solid electrolyte includes the polymer, and the first solid electrolyte does not. It is the Examiners position that all of the presented predictable solutions are obvious based on the teachings of Li.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention have pursued the presented potential solution of having the second solid electrolyte includes the polymer/binder and the first solid electrolyte does not with a reasonable expectation of success because Li contemplates this embodiment as a suitable composition for the solid electrolyte layers.
and wherein the second solid electrolyte layer faces the negative electrode (the second solid state electrolyte (corresponding to the claimed first solid electrolyte) is separated from the anode by the first solid state electrolyte (corresponding to the claimed second solid electrolyte), see [0005]).
Regarding Claim 2, Li teaches:
wherein the binder is one or more selected from a group consisting of polytetrafluoroethylene, polyethylene oxide, polyethylene glycol, polyacrylonitrile, polyvinyl chloride, polymethyl methacrylate, polypropylene oxide, polyphosphazene, polysiloxane, polydimethylsiloxane, polyvinylidene fluoride, polyvinylidene fluoride- hexafluoropropylene (PVDF-HFP), polyvinylidene fluoride-chlorotrifluoroethylene (PVDF-CTFE), polyvinylidene fluoride-tetrafluoroethylene (PVDF-TFE), polyvinylidene carbonate, polyvinylpyrrolidone, styrene-butadiene rubber, nitrile- butadiene rubber, and hydrogenated nitrile butadiene rubber (All the following suitable polymers listed by Li are in the claim above: polyethylene oxide, polyvinylidene fluoride, poly(vinylidene fluoride-co-hexafluoropropylene), poly(ethyl methacrylate), or poly(vinylidene fluoride-co-trifluoroethylene), see [0092]).
Regarding Claim 3, Li does not necessary teach
wherein ingredients of the first solid electrolyte layer and the second solid electrolyte layer are identical to each other excluding the binder.
As best the Examiner understands the claim in reference to the 112b rejection above, Claim 3 is interpreted to require at least two “ingredients” which can be either starting materials in the preparation of the solid electrolyte layers or constituents of the final product of the solid electrolyte layers.
Li teaches a suitable embodiment in which the battery has the following structure, Li-G | LPSCl | LGPS | 811, wherein LPSCl is Li5.5PS4.5Cl1.5 and LGPS Li10Ge1P2S12, see [0133] and (1) Table on pg. 20. LPSCl and LGPS has the identical constituents of Li, P and S.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to
Regarding Claim 4, Li does not necessarily teach:
wherein a thickness of the first solid electrolyte layer is equal to or greater than a thickness of the second solid electrolyte layer.
The only example that Li gives as to thickness of the solid electrolyte layers is Li/G-LPSCl (100 μm)-LSPS (50 μm)-LPSCl (50 μm)-NMC811 wherein the first solid electrolyte (second solid electrolyte) is LPSCl and the second solid electrolyte is LSPS, see [0051]. However, Li further teaches that the total thickness of the electrolyte layer is kept the same unless otherwise specified, see [0109]. Therefore, it is reasonable to conclude that a bilayer solid electrolyte such as those shown in Table on page 20 would have a first and second solid electrolyte layers that are equal to each other which falls on the end point of the claimed range.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have the first and second solid electrolyte layers of Li be equal thickness to each other because the teaching of Li indicate this is a suitable embodiment.
Regarding Claim 6, Li teaches:
wherein the first solid electrolyte layer and the second solid electrolyte layer are adhered to each other.
As evidence by Lee, a binder introduces and increases binding force, thereby, having the first solid electrolyte layer (i.e., second solid electrolyte) with polymer/binder present introduces some amount of binding force (i.e. adhesion) between the first and second solid electrolyte layers.
Regarding Claim 7, Li does not necessarily teach:
wherein the negative electrode does not comprise a negative electrode mixture layer.
However, Li teaches it is suitable to have a battery with an anode-free design (i.e., without Li present), wherein the Li source is from the cathode material, see [0090].
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have an anode-free battery design because Li teaches this is a suitable battery configuration.
Regarding Claim 9, Li teaches:
wherein solid electrolyte particles present at a surface of the second solid electrolyte layer contact the negative electrode (based on the experimental methods Li describes the first electrolyte as being in direct contact with lithium or graphite coated lithium, see [0109] and [0123]).
Regarding Claim 10, Li teaches
A battery module comprising the all-solid-state battery according to any one of claim 1 as a unit cell (“The anode, cathode, and solid electrolytes can use bipolar or parallel stacking to form a battery module,” see [0096].).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US-20240047734-A1) with evidence provided from Lee et al. (US-20240429436-A1 as applied to Claim 1 above and in in further view Lee et al. (US-20240429436-A1 relying on the foreign priority date of 09/8/2021).
Regarding Claim 5, Li is silent toward an appropriate amount of polymer/binder to add to the second electrolyte layer (i.e., first electrolyte layer) and, therefore, does not teach:
wherein the binder is included in the first solid electrolyte layer in an amount of 0.2 weight% to 15 weight% based on a total weight of a solid content included in the first solid electrolyte layer.
To solve the same problem of designing an all-solid battery (see), Lee teaches a suitable binder content amount in a solid electrolyte layer is form 1 wt % to 10 wt % with respect to the total weight of the solid electrolyte layer, which is within the claimed range, see [0053]. Lee further teaches this range of binder amount balances the considerations of improved binding force while maintaining high energy density, see [0053].
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have provided the binder of the first solid electrolyte layer (i.e., second solid electrolyte layer) of Li be within the range of 1 wt % to 10 wt % taught by Lee to balance the considerations of improved binding force while maintaining high energy density.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US-20240047734-A1) with evidence provided from Lee et al. (US-20240429436-A1 as applied to Claim 1 above and in in further view Niu et al. (Chemical Engineering Journal, 429 (2022, available online 09/2/2021), 32156).
Regarding Claim 8, Li teaches that the solid state electrolyte multilayer can suitable be separated by the anode with a protective layer which can suitably include a mixture of Ag and fullerene, see [0099]. However, Li is silent towards this suitable mixture being disposed in distinct layers and therefore does not teach:
wherein the negative electrode comprises a coating layer and an ion transport layer ().
To solve the same problem of providing a protective interlayer for a lithium metal anode (see Abstract), Niu teaches fullerene (C ) and silver (Ag) bilayers on a current collector, see Pg2/C(left)/last paragraph. Niu teaches a bottom lithiophilic Ag layer (i.e. coating layer) and a top fullerene layer which forms an ionically conducting matrix (i.e., ion transport layer), see Pg2/C(left)/last paragraph. Niu indicates this interlayer has the advantageous effect of long-term cycle life and high-rate performance in lithium-metal full cells, see Abstract.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have deposited a fullerene top layer and silver bottom layer in the anode of Li to have of long-term cycle life and high-rate performance in lithium metal batteries.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kayla E Clary whose telephone number is (571)272-2854. The examiner can normally be reached Monday - Friday 8:00-5:00 (PT).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.E.C./
Kayla E. ClaryExaminer, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
