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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16 and 20, drawn to an electrode structure, classified in CPC H01M10/056.
II. Claims 17-19, drawn to a method of making an electrode, classified in CPC H01M40407.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product made and process of making. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process. For example, the product can be made via sputtering or chemical vapor deposition (CVD).
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
• the inventions have acquired a separate status in the art in view of their different classification
• the inventions have acquired a separate status in the art due to their recognized divergent subject matter
• the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with John Mihelcic on 7/8/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-16 and 20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
The information disclosure statement filed 7/26/2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language (e.g. International Search Report dated June 21, 2024). It has been placed in the application file, but the information referred to therein has not been considered.
Claim Interpretation
The elements “silicon” (Si) and “germanium” (Ge) each being a “metal” (see at least originally filed claim 4) is interpreted as “referring to both (e.g., simultaneously) metals and metalloids such as silicon and germanium in an elemental or ionic state” as per Applicant’s Specification para 0035.
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.
Claims 1-3, 6-16, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mimura et al (US 2020/0099089).
With respect to claims 1, 10, and 20, Mimura discloses in fig. 1 a “lithium ion secondary battery” [10] comprising an electrode structure (Abstract; para 0297), wherein the electrode structure comprises: an “electrode collector” (i.e. claimed “electrode current collector”) [1] or [5] of Ni or stainless steel (which contains Cr), and a “solid electrolyte layer” [3] comprising a “polymer (A)” (i.e. claimed “polymer electrolyte”) on the electrode current collector [1] or [5] (Abstract; para 0297 and 0306-0310). Mimura further discloses the polymer electrolyte [3] comprises the polymer (A) and “an electrolyte salt (B) having an ion of a metal belonging to Group I or II of the periodic table” (emphasis added) (i.e. the electrolyte salt (B) is a metal salt) (Abstract), wherein the polymer (A) comprises “at least one selected from the group consisting of polyether, polysiloxane, polyester, polycarbonate, polyurethane, polyuria, or polyacrylate” (emphasis added) in addition to “crosslinking structure includes a bridged structure between polymers” (emphasis added) and with “the polymer (A) may be […] singly or two or more polymers” (emphasis added) (para 0055, 0061, 0088); thus Mimura teaches a cross-linked structure comprising two polymers (i.e. first and second polymers), wherein the second polymer is polyurethane. Mimura also discloses that each of the polymers (i.e. the first and second polymers) has a repeating unit (i.e. repeating unit (A) for the first polymer and repeating unit (B) for the second polymer) (para 0061-0062, 0066, 0069, 0072), and the first polymer comprises a polar functional group (para 0061-0063, 0066-0067, 0069, 0072, and 0076-0078).
With respect to claims 2 and 3, Mimura further discloses the electrode current collector [1] or [5] comprises a base film of Al or stainless steel (which contains Cr) that is treated with a “thin film” (i.e. claimed “metal layer”) of Ni, and wherein the electrode current collector [1] or [5] does not contain Cu (para 0306-0310). Claim 3 recites “the base film comprises a metal or a polymer” (emphasis added); thus “a polymer” is an optional limitation due to the alternative language “or”, and accordingly not required.
With respect to claim 6, Mimura further discloses an amount of the metal salt is between about 1-50 parts by weight with respect to 100 parts by weight of the cross-linked structure of the first and second polymers (para 0158-0159 and 0167).
With respect to claims 7 and 9, Mimura further discloses the first polymer is polymethyl methacrylate and/or polyethylene oxide (para 0061-0063, 0066-0067, 0069, 0072, 0076-0078, and 0082).
With respect to claim 8, Mimura further discloses the first polymer has at least one terminal double bond (para 0061-0063, 0066-0067, 0069, 0072, 0076-0079, and 0085).
With respect to claim 11, Mimura further discloses the repeating unit (A) for the first polymer has an amount of about 50-90 wt% of a total weight of the cross-linked structure of the first and second polymers (para 0061-0081), and the repeating unit (B) for the second polymer of the polyurethane has an amount of about 10-50 wt% of a total weight of the cross-linked structure of the first and second polymers (para 0061 and 0072-0075)
With respect to claim 12 and 13, Mimura further discloses the polymer electrolyte [3] with the electrolyte salt (B) (i.e. metal salt) is composed of a lithium salt, wherein the lithium salt is LiPF6 (Abstract; para 0093-0103 and 0297).
With respect to claims 14 and 15, Mimura further discloses the polymer electrolyte [3] comprises an organic solvent acetonitrile (para 0221-0222, 0231, and 0297). Claim 14 recites “the polymer electrolyte further comprises an organic solvent or an ionic liquid” (emphasis added); thus “an ionic liquid” is an optional limitation due to the alternative language “or”, and accordingly not required.
With respect to claim 16, Mimura further discloses the polymer electrolyte has a thickness of “preferably” about 20-150 mm (para 0283 and 0290).
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.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Mimura et al (US 2020/0099089) as applied to claim 1 above, and further in view of Golovin et al (US 5,620,810).
With respect to claims 4 and 5, the reference is cited as discussed for claim 1.
However Mimura is limited in that while the metal salt “is not particularly limited as long as the [metal] salt exhibits the characteristic of developing ion conductivity” and may be contained as two or more metal salts (para 0093 and 0103), the metal salt comprising Au, Ag, Pt, Zn, Si, or Mg is not specifically suggested.
Golovin teaches a rechargeable battery (i.e. secondary battery) with an electrode structure comprising a current collector and a solid electrolyte comprising a mixture of polymers and an “inorganic ion salt” (i.e. metal salt) (Abstract; col. 1, lines 19-39; col. 3, lines 22-48; col. 5, lines 19-32; col. 6, lines 54-62; col. 8, lines 15-17 and 54-66), similar to the solid electrolyte layer [3] of Mimura. Golovin further teaches the metal salt is AgNO3 in addition to Li (col. 6, lines 54-62), which increases conductivity (col. 1, lines 61-64).
It would have been obvious to one of ordinary skill in the art to incorporate the metal salt of AgNO3 taught by Golovin as or with the metal salt of Mimura to yield the predictable result of increasing conductivity. In addition it would have been obvious to one of ordinary skill to incorporate the metal salt of AgNO3 taught by Golovin as or with the metal salt of Mimura since “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination” (MPEP 2144.07).
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 1-16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/017357 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 19/017357 application are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-20 of the 19/017357 application would also meet the requirements set forth in claims 1-16 and 20 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/679194 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 18/679194 application are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-20 of the 18/679194 application would also meet the requirements set forth in claims 1-16 and 20 of the current invention..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/671826 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 18/671826 application are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-20 of the 18/671826 application would also meet the requirements set forth in claims 1-16 and 20 of the current invention..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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