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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has complied with all of the conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 02/22/2024 and 08/22/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The specification filed on 02/22/2024 was reviewed and is acceptable.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
To satisfy the enablement requirement of 35 U.S.C. 112, first paragraph, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without "undue experimentation." See, e.g., In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988). In In re Wands, the court set forth the following factors to consider when determining whether undue experimentation is needed: (1) the breadth of the claims; (2) the nature of the invention; (3) the state of the prior art; (4) the level of one of ordinary skill; (5) the level of predictability in the art; (6) the amount of direction provided by the inventor; (7) the existence of working examples; and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Wands, 858 F.2d at 737. The undue experimentation determination is not a single factual determination. Rather, it is a conclusion reached by weighing all the factual considerations. Wands, 858 F.2d at 737.
Whether the specification would have been enabling as of the filing date involves consideration of the nature of the invention, the state of the prior art, and the level of skill in the art. The initial inquiry is into the nature of the invention, i.e., the subject matter to which the claimed invention pertains. The nature of the invention becomes the backdrop to determine the state of the art and the level of skill possessed by one skilled in the art. See MPEP § 2164.05(a).
Claim 1 broadly encompasses a negative electrode containing any “Si-containing negative electrode active material,” provided that the electrode produces a value of: SEI100−SEI5≤10 when evaluated according to Equation (1).
The claimed SEI100−SEI5 limitation is not shown to be an inherent property of the negative electrode alone. Equation (1) depends on measurements from both the negative and positive electrodes, including CLL, CW, CMW, MLi, and MTM. In addition, the underlying changes occurring between cycles 5 and 100 would reasonably be expected to depend on the positive-electrode material, electrolyte, electrode capacity balance, formation procedure, cycling protocol, and temperature.
The specification recognizes the interdependent and unpredictable nature of the battery system “it has become more difficult to determine the life characteristics of a negative-electrode material in an actual lithium secondary battery.” Although particular cycling and full-cell conditions are disclosed, claim 1 is not limited to those conditions.
The specification also identifies broad alternatives for the positive electrode, separator, electrolyte, additives, binders, conductive materials, and cell configuration. The disclosure does not establish that a particular negative electrode will satisfy the claimed numerical limitation across those materially different battery environments, or identify a standardized battery environment under which the claimed property must invariably be determined. Further, the examples themselves use ranges of possibilities in single examples (e.g., 5-30 wt% Si containing negative electrode active material in example 1) rather than defined amounts. Even if one wanted to recreate the examples, they would need to experiment with multiple variables defined by a range to determine what works and what does not.
Therefore, a person of ordinary skill could not determine from the negative electrode itself whether it falls within the claim. The person would instead have to select among numerous positive electrodes, electrolytes, formation procedures, capacity ratios, and cycling conditions, manufacture corresponding cells, cycle the cells, destructively analyze separate cells or specimens, and determine whether a particular combination happens to produce the claimed result.
The Wands factors, thefefore support a finding of undue experimentation:
The quantity of experimentation would be high. Each candidate requires material synthesis, electrode manufacture, cell assembly, extended cycling, destructive disassembly, ICP analysis of both electrodes, and calculation at cycles 5 and 100.
There is limited direction or guidance. The specification identifies many possible materials and process variables but does not provide a relationship between those variables and the claimed numerical result.
There are few working examples with limited details. The specification reports nine examples satisfying the limitation, but omit the exact process and formulation conditions used to obtain the reported results.
Nature of the invention and state of the prior art. The invention concerns long-term negative electrode active behavior. The prior art recognizes the use of Si-containing negative electrode active material (see Marius Flügel et al 2022 J. Electrochem. Soc. 169 050533, Page 2] but does not appear to show the claimed parameter was recognized in the art or that its value could have been predicted from conventional electrode characteristics.
There is low predictability. The specification expressly acknowledges the difficulty of predicting actual battery-life behavior when different battery components are combined.
The claims are broad. The claim encompasses essentially any Si-containing active material and is not restricted to the disclosed cell chemistry, electrode formulation, or cycling protocol.
Given the breadth of the claims, limited details for the examples, lack of guidance in the specification, the quantity of experimentation needed to make or use the invention based on the content of the disclosure would be undue.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE WOLFE STONE FENNELL whose telephone number is (571)270-5926. The examiner can normally be reached M-TH 7:30am - 5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.W.F./Examiner, Art Unit 1781
/FRANK J VINEIS/ Supervisory Patent Examiner, Art Unit 1781
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