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
Applicant’s election of Group I, claims 1-9, in the reply filed on 8/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/20/2026.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 4-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yao et al (US 2023/0170471).
With respect to claim 1, Yao discloses a “patterned multilayered electrode” (i.e. electrode) for a rechargeable battery (Abstract; para 0003 and 0058), wherein fig. 8 depicts the electrode [200] comprises: a current collector (i.e. claimed “substrate”) [202] (para 0061); a “first active material layer” (i.e. claimed “lower layer”) [210] (para 0061); a “second active material layer” (i.e. claimed “pattern layer”) [220] formed on the lower layer [210], with the pattern layer [220] having a “plurality of cavities” [230] that form the claimed “portions” as shown in fig. 8 (para 0061-0062); “protrusions” [262] formed by “filling the plurality of cavities” [230] (para 0071-0072), the protrusions [262] being the claimed “filling layer” [262] formed on the lower layer [210] and located between the portions of the pattern layer [220] as shown in fig. 8; and a “separator layer” (i.e. claimed “upper layer”) [260] formed on the pattern and filling layers [220],[262] (para 0072).
With respect to claim 4, Yao further discloses the filling layer [262] and upper layer [260] are “an integrated ceramic layer” that “may increase ion mobility through the electrode” (para 0071-0072); thus the filling and upper layers [262],[260] are of the same material which is a material that is ‘active’ to increase ion mobility through the electrode [200].
With respect to claims 5 and 6, the reference is cited as discussed above for claim 1. Since Yao teaches different materials for the pattern layer [220] and the filling and upper layers [262],260] as required by claim 1 (para 0062, 0071, and 0111), a prima facie case of either anticipation or obviousness has been established that Yao also teaches the resulting pattern layer [220] having properties of: “a viscosity of the pattern layer is greater than viscosities of the filling layer and of the upper layer” (claim 5) and “the viscosity of the upper layer and the filling layer is about 3,000±1,500 mPas, and the viscosity of the pattern layer is about 9,500±4,500 mPas” (claim 6) (MPEP 2112.01, I).
With respect to claims 7 and 8, Yao further discloses the portions of the pattern layer [220] of fig. 8 are arranged in “arrays”, each of the arrays shown as a matrix in figs. 3-4 and 6 or as columns with a length in one direction in fig. 5 (para 0062-0063).
With respect to claim 9,Yao further discloses in fig. 1 a negative electrode [104] overlapping a positive electrode [102] with a separator [112] therebetween (para 0051-0052), wherein the negative electrode [104] comprises the patterned multilayered electrode (i.e. electrode [200]) (para 0060-0062 and 0070-0071).
Claims 2 and 3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yao et al (US 2023/0170471), as evidenced by Liu et al (CN 117133879, machine translation cited below).
With respect to claims 2 and 3, Yao further discloses the second active material layer (i.e. pattern layer) [220] includes a silicon-based active material such as silicon (para 0062 and 0111), and the first active material layer (i.e. lower layer) [210] includes a carbon-based active material (para 0061 and 0104), and the filler and upper layers [262],[260] includes alumina (para 0071), with silicon known to have a greater expansion property during lithiation than alumina and carbon-based materials, as evidenced by Liu at p. 4.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/377157 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both require a negative electrode comprising: a substrate (i.e. a current collector); lower and upper layers (i.e. first and third active material layers) on the substrate/current collector; pattern and filler layers (i.e. the second active material layer comprising the first and second regions of a second active material including the first and second active materials are also alternately arranged); wherein the first and second regions extend parallel to each other (i.e. portions of the pattern layer comprise columns having a length in one direction). The porosities of the first, second, and third active material layers (i.e. lower, pattern/filler, and upper layers) would be obvious in view of the materials. The negative electrode is part of a rechargeable battery having a positive electrode and a separator between the negative and positive electrodes.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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