DETAILED ACTION
Claims 1-5, 7, 9-11 and 15-21 are presented for examination, wherein claims 1, 4, and 17 are currently amended; plus claim 21 is newly added. Claims 6, 8, and 12-14 are cancelled.
The 35 U.S.C. §§ 112(a) and (b) rejections of claims 1-5, 7, 9-11 and 15-20 are withdrawn, as a result of the amendment to claim 1, from which the other claims depend or incorporate by reference.
The applicant’s November 26, 2024 Request for Participation in the Patent Prosecution Highway was granted on December 31, 2024.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 7, 9-11 and 15-20 and newly added claim 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto et al (KR 2022/0048424, published April 19, 2022).
Regarding newly amended independent claim 1, Sugimoto teaches an all-solid state battery (e.g. item 100) comprising:
(1) a negative electrode (e.g. item 120) comprising:
(1a) a negative electrode current collector (e.g. item 121);
(1b) a metal layer (e.g. item 123) composed primarily of lithium (i.e., metallic lithium) directly on said negative electrode current collector;
(1c) a negative active material layer (e.g. item 122) directly on said metal layer and may act as a protective layer for said metal layer, wherein said negative active material layer (e.g. item 122) may have a thickness of about µm to 20 µm,
wherein said negative active material layer acting as said protective layer may be applied on said metal layer as a stably dispersed slurry then dried,
wherein said negative active material layer comprising:
(1c1) a first particle (e.g. item 1221) including a carbon-based material, wherein said carbon-based material may be e.g. carbon black, acetylene black, furnace place, ketjen black, graphene, or combination thereof,
wherein said carbon-based material may be present in an amount of about 50 wt % to about 95 wt %, based on the total weight of said negative active material layer;
(1c2) a second particle (e.g. item 1222) including a metal-based material that does not cause an alloying reaction with lithium (Li),
wherein said second particle may be composed of e.g. copper, nickel, cobalt, tungsten, iron, and alloys thereof,
wherein said second particle may be in the form of a nano powder and may have an average particle size (D50) of about 100 nm or less, preferably, but not limited to, a range of 5-100 nm,
wherein said second particle may be present in an amount of about 5 wt % to about 45 wt %, based on the total weight of said negative active material layer,
said second particle and said carbon-based material in a weight ratio of 1:1 to 1:20 to improve the conductivity of said negative electrode,
wherein a resistance value of said second particle (1222) may be smaller than a resistance value of said first particle (1221);
(1c3) a binder in an amount of e.g. 0.3 wt% to 15 wt%, based on the total weight of said negative active material layer; and,
(1c4) a metal or semiconductor material particle that may form an alloy with lithium, said metal or semiconductor material comprising at least one of silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn),
wherein a balance of said negative active material layer (e.g. item 122) is said metal or semiconductor material particle, which may be calculated, based on the layer components supra, to be e.g. >0 wt% to 44.7 wt%, based on the total weight of said negative active material layer;
(2) a solid electrolyte layer (e.g. item 130) comprising a sulfide-based solid electrolyte material, such as e.g. Li2S—P2S5, Li2S—P2S5—LiX (X is a halogen element, for example, I, Cl, Br, F), Li2S—P2S5—Li2O, Li2S—P2S5—Li2O—LiI, Li2S—SiS2, Li2S—SiS2—LiI, Li2S—SiS2—LiBr, Li2S—SiS2—LiCl, Li2S—SiS2—B2S3—LiI, Li2S—SiS2—P2S5—LiI, Li2S—B2S3, Li2S—P2S5—ZmSn ( m, n are positive numbers, Z is one of Ge, Zn or Ga), Li2S—GeS2, Li2S—SiS2—Li3PO4, LiCl—Li2S—Li3PS4, Li2S—SiS2—LipMOq (p, q is a positive number, M is one of P, Si, Ge, B, Al, Ga In); Argyrodite-based material, for example, Li6PS5X (X is at least one type of halogen element) and the like;
(3) a positive electrode (e.g. item 110) comprising:
(3a) a positive electrode current collector (e.g. item 111);
(3b) a positive electrode active material layer (e.g. item 112) composed of cathode active material including at least one of lithium metal oxide; a lithium transition metal oxide; and, lithium metal phosphate, sulfide, or oxide, examples such as lithium cobalt oxide (“LCO”), lithium nickel oxide, lithium nickel cobalt oxide, lithium nickel cobalt aluminum oxide (“NCA”), lithium nickel cobalt manganese oxide ( “NCM”), or lithium manganate
(e.g. ¶¶ 0006, 16, 24, 26, 28-29, 52-56, 68-85, 109-110, 112-117, 123, and 135; plus e.g. Figures 1-2),
said negative active material layer applied said metal layer as a stably dispersed slurry then dried reading on “coating;” alternatively, a potential interpretation of the limitation “coating” being a process of deposition does not patentably distinguish the instant product claim, see also e.g. MPEP § 2113, said negative active material layer (e.g. item 122), which acts as said protective layer for said metal layer reading on “coating,”
said protective layer (e.g. item 122) comprising:
(1) said metal or semiconductor material particle may form said alloy with lithium, said metal or semiconductor material comprising at least one of silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn) (e.g. supra),
said metal or semiconductor material corresponding with the “element A alloyable with lithium,” reading on “an element A alloyable with lithium” and “the element A is a metal or metalloid;”
(2) said second particle (e.g. item 1222) including said metal-based material that does not cause an alloying reaction with lithium (Li), wherein said second particle may be composed of e.g. copper, nickel, cobalt, tungsten, iron, and alloys thereof (e.g. supra),
said second particle corresponding with the “element B not alloyable with lithium,” reading on “an element B not alloyable with lithium;” and,
(3) said first particle (e.g. item 1221) including said carbon-based material, wherein said carbon-based material may be e.g. carbon black, acetylene black, furnace place, ketjen black, graphene, or combination thereof (e.g. supra),
said first particle corresponding with the claimed “carbonaceous material,” reading on “a carbonaceous material,”
wherein said carbon-based material may be present in said amount of about 50 wt % to about 95 wt %, based on the total weight of said negative active material layer (e.g. supra),
noting that while the measurement methods are different—weight vs. volume—the relative densities of the different components are assumed to be roughly similar, such that the taught weight percent and volume percent are assumed to be approximately similar throughout the instant Office action; considering also—for merely illustrative purposes—the originally filed claim 6 and instant specification, which provides a total weight percentage amount of elements A and B is in a range “from 5% to 20%” in the coating compared with instant specification, which provides a total volume percentage of elements A and B in an a range of “from 5% to 20%” in the coating (e.g. ¶¶ 0022-23 and further originally filed claim 6),
the taught range of said carbon-based material establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “the carbonaceous material has a volume percentage of at least 50% in the coating.”
Regarding the previously added limitations “the element A has a weight percentage in a range from 1% to 10% in the coating” and “the element B has a weight percentage in a range from 3% to 15% in the coating,” incorporating the originally filed subject matter of claim 5; and, “the total weight percentage of the element A and element B is in a range from 5% to 20% in the coating,” incorporating the originally filed subject matter of claim 6; plus, the newly amended, previously amended, previously added limitation “the weight ratio of the element A to the element B is 3/7,” incorporating subject matter from examples 4-6 of the instant specification (see e.g. July 2, 2025 Remarks), and further supra, said metal or semiconductor material particle may be calculated, based on the layer components supra, to be e.g. >0 wt% to 44.7 wt%, based on the total weight of said negative active material layer (e.g. supra), said metal or semiconductor material corresponding with the “element A alloyable with lithium;” plus, said second particle may be present in an amount of about 5 wt % to about 45 wt %, based on the total weight of said negative active material layer (e.g. supra), said second particle corresponding with the “element B not alloyable with lithium,” severably establishing a prima facie case of the claimed ranges, see also e.g. MPEP§ 2144.05(I), reading on said previously added limitations plus said newly amended, previously amended, previously added limitation.
Regarding previously amended claim 2, Sugimoto teaches the layer of claim 1, wherein said metal or semiconductor material particle may form said alloy with lithium, said metal or semiconductor material comprising at least one of silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn) (e.g. supra), said metal or semiconductor material corresponding with the “element A alloyable with lithium,” reading on “the element A is capable of forming an alloy with lithium…,” and further teaches said metal or semiconductor material particle forming an alloy with lithium (e.g. ¶0112), reading on the previously amended limitation “the element A alloyable with lithium forms an alloy with lithium,” but does not expressly teach the previously amended limitation “the alloy includes the element lithium with a weight percentage greater than or equal to 4% therein.”
However, Sumitomo teaches a substantially identical metal or semiconductor material particle (e.g. supra, compared with instant specification, at e.g. ¶¶ 0016-17 and 66-67), establishing a prima facie case of obviousness of the previously amended limitation “the alloy includes the element lithium with a weight percentage greater than or equal to 4% therein;” alternatively, establishing a prima facie case of obviousness of the previously amended limitation “the element A alloyable with lithium forms an alloy with lithium and wherein the alloy includes the element lithium with a weight percentage greater than or equal to 4% therein, see also e.g. MPEP § 21112.01.
Regarding claim 3, Sugimoto teaches the layer of claim 1, wherein said metal or semiconductor material particle may form said alloy with lithium, said metal or semiconductor material comprising at least one of silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn) (e.g. supra), said metal or semiconductor material corresponding with the “element A alloyable with lithium,” reading on “the element A is at least one selected from the group consisting of Ag, Zn, Ti, Cd, Mg, Al, Ga, Si, Ge, In, Sn, Pb, Bi, and Sb.”
Regarding claim 4, Sugimoto teaches the layer of claim 1, wherein said second particle (e.g. item 1222) including said metal-based material that does not cause an alloying reaction with lithium (Li), wherein said second particle may be composed of e.g. copper, nickel, cobalt, tungsten, iron, and alloys thereof (e.g. supra), said second particle corresponding with the “element B not alloyable with lithium,” reading on “the element B…is at least one selected from the group consisting of Cu, Mo, Ir, W, Co, Ni, Ru, Fe, Se, Ta, Nb, V, and Zr;” and further teaches said first particle (e.g. item 1221) including said carbon-based material, wherein said carbon-based material may be e.g. carbon black, acetylene black, furnace place, ketjen black, graphene, or combination thereof, wherein said resistance value of said second particle may be smaller than said resistance value of the first particle (e.g. supra), said first particle corresponding with the claimed “carbonaceous material,” reading on the limitation “the element B has an electric conductivity greater than that of the carbonaceous material….”
In the alternative regarding the limitation “the element B has an electric conductivity greater than that of the carbonaceous material…,” Sugimoto teaches a substantially identical second particle composition (e.g. supra, compared with instant claim limitation supra) and a substantially identical carbon-based material (supra, compared with instant specification, at e.g. ¶¶ 0015, 55-56, and 91), establishing a prima facie case of obviousness of the claimed limitation, see also e.g. MPEP § 21112.01.
Regarding previously amended claim 5, Sugimoto teaches the layer of claim 1, wherein said metal or semiconductor material particle may be calculated, based on the layer components supra, to be e.g. >0 wt% to 44.7 wt%, based on the total weight of said negative active material layer (e.g. supra), said metal or semiconductor material corresponding with the “element A alloyable with lithium,” establishing a prima facie case of the claimed range, see also e.g. MPEP§ 2144.05(I), reading on the previously amended limitation “the element A has a weight percentage in a range from 1% to 6% in the coating.”
Regarding claim 7, Sugimoto teaches the layer of claim 1, wherein said metal or semiconductor material particle may form said alloy with lithium, said metal or semiconductor material comprising at least one of silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn) (e.g. supra), said metal or semiconductor material corresponding with the “element A alloyable with lithium;” plus, said second particle (e.g. item 1222) including said metal-based material that does not cause an alloying reaction with lithium (Li), wherein said second particle may be composed of e.g. copper, nickel, cobalt, tungsten, iron, and alloys thereof (e.g. supra), said second particle corresponding with the “element B not alloyable with lithium,” but does not expressly teach the limitation “the electrical conductivity of the element B is greater than that of element A.”
However, Sugimoto teaches a substantially identical metal or semiconductor material particle and second particle (e.g. supra, compared with instant specification, at e.g. ¶¶ 0017-20 and 67-72), establishing a prima facie case of obviousness of the claimed limitation, see also e.g. MPEP § 2112.01.
Regarding claims 9-10, Sugimoto teaches the layer of claim 1, wherein said second particle (e.g. item 1222) may be in the form of said nano powder and may have said average particle size (D50) of about 100 nm or less, preferably, but not limited to, said range of 5-100 nm (e.g. supra), said second particle corresponding with the “element B not alloyable with lithium,” reading on “the element A, the element B or both are in a form of nanoparticles, nanoplatelets, nanowires, or nanotubes in the coating” (claim 9) and establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “…the nanoparticles have an average particle size (D50) in a range from 20 nm to 80 nm” (claim 10), wherein Sugimoto teaches said protective layer composition (see supra), further teaches components thereof are “dispersed therein” during deposition (e.g. ¶0115) and does not teach said second powder is agglomerated in the resulting protective layer (e.g. entire disclosure), reading on the limitation “the nanoparticles are free of agglomeration in a cross-section of the coating….”
In the alternative, Sugimoto teaches a substantially identical protective layer (e.g. supra, compared with instant specification, at e.g. ¶¶ 0017-18, 57, and 59), establishing a prima facie case of obviousness of the claimed limitation, see also e.g. MPEP § 2112.01.
Regarding claim 11, Sugimoto teaches the layer of claim 1, wherein said negative active material layer (e.g. item 122) may have a thickness of about µm to 20 µm (e.g. supra), establishing a prima facie case of obviousness of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “the coating has a thickness in a range from 0.1 μm to 50 μm.”
Regarding claims 15-20, Sugimoto is applied as provided supra, with the following modifications.
Still regarding independent claim 15, Sugimoto teaches said all-solid state battery comprising said negative electrode, wherein said negative electrode comprises said metal layer composed primarily of lithium (i.e., metallic lithium); and, said negative active material layer (e.g. item 122) directly on said metal layer and may act as said protective layer for said metal layer (e.g. supra), reading on “electrochemical device comprising the coating of claim 1 disposed on a negative electrode.”
Still regarding claim 16, Sugimoto teaches the battery of claim 15, wherein said negative electrode comprises said negative electrode current collector; said metal layer (e.g. item 123) composed primarily of lithium (i.e., metallic lithium) directly on said negative electrode current collector; and, said negative active material layer (e.g. item 122) directly on said metal layer and may act as said protective layer for said metal layer (e.g. supra), reading on “wherein the negative electrode comprises a layer of an anode active material comprising lithium metal.”
Still regarding newly amended claim 17, Sugimoto teaches the battery of claim 15, wherein said solid electrolyte layer comprising said sulfide-based solid electrolyte material, such as e.g. Li2S—P2S5, Li2S—P2S5—LiX (X is a halogen element, for example, I, Cl, Br, F), Li2S—P2S5—Li2O, Li2S—P2S5—Li2O—LiI, Li2S—SiS2, Li2S—SiS2—LiI, Li2S—SiS2—LiBr, Li2S—SiS2—LiCl, Li2S—SiS2—B2S3—LiI, Li2S—SiS2—P2S5—LiI, Li2S—B2S3, Li2S—P2S5—ZmSn ( m, n are positive numbers, Z is one of Ge, Zn or Ga), Li2S—GeS2, Li2S—SiS2—Li3PO4, LiCl—Li2S—Li3PS4, Li2S—SiS2—LipMOq (p, q is a positive number, M is one of P, Si, Ge, B, Al, Ga In); Argyrodite-based material, for example, Li6PS5X (X is at least one type of halogen element) and the like (e.g. supra), reading on the newly amended limitation “further comprising a sulfide-based solid electrolyte comprising at least one selected from the group consisting of Li2S—P2S5—LiX (where X is a halogen element), Li2S—P2S5—Li2O, Li2S—P2S5—Li2O—LiI, Li2S—SiS2, Li2S—SiS2—LiI, Li2S—SiS2—LiBr, Li2S—SiS2—LiCl, Li2S—SiS2—B2S3—LiI, Li2S—SiS2—P2S5—LiI, Li2S—B2S3, Li2S—P2S5—ZmSn (where m and n are each a positive number, and Z is one selected from Ge, Zn and Ga), Li2S—GeS2, Li2S—SiS2—Li3PO4, Li2S—SiS2—LipMOq (where p and q are each a positive number, and M is one selected from P, Si, Ge, B, Al, Ga, and In), Li7−xPS6−xClx (0≤x≤2), Li7−xPS6−xBrx (0≤x≤2), Li7−xPS6−xIx (0≤x≤2), and mixtures thereof.”
Still regarding claims 18-20, Sugimoto teaches the battery of claim 15, wherein said battery is charge-discharge cycled at the same C-rate of 0.33C up to 50 cycles results in a capacity retention rate of 90% or more (¶¶ 0161-182 plus e.g. Figures 6-7), establishing a prima facie case of the claimed range, see also e.g. MPEP § 2144.05(I), reading on “the electrochemical device exhibits a capacity retention rate of at least 90% after 20 cycles at a discharge rate of 0.33 C” (claim 18); and, Sugimoto teaches a substantially identical all-solid-state battery (e.g. supra, compared with the instant specification, at e.g. ¶¶ 0039-40, 44-53, 55-59, and 109-111), severably establishing a prima facie case of obviousness of the claimed limitations, see also e.g. MPEP § 2112.01, “the electrochemical device exhibits a capacity retention rate of at least 90% after 20 cycles at a discharge rate of 0.33 C” (claim 18); “the electrochemical device exhibits a specific capacity of at least 155 mAh g−1 after 20 cycles at a discharge rate of 0.33 C” (claim 19); plus, “the electrochemical device exhibits at a C-rate in a range from 1 C to 5.5 C a charging overpotential of at least 30% lower than that of an electrochemical device comprising an anode coating comprising Ag/C layer at the same C-rate” (claim 20).
Regarding newly added claim 21, Sugimoto teaches the layer of claim 1, wherein said metal or semiconductor material particle may form said alloy with lithium, said metal or semiconductor material comprising at least one of silicon (Si), silver (Ag), aluminum (Al), bismuth (Bi), tin (Sn), and zinc (Zn) (e.g. supra), said metal or semiconductor material corresponding with the “element A alloyable with lithium,” reading on “the element A is Zn;” and,
wherein said second particle (e.g. item 1222) including said metal-based material that does not cause an alloying reaction with lithium (Li), wherein said second particle may be composed of e.g. copper, nickel, cobalt, tungsten, iron, and alloys thereof (e.g. supra), said second particle corresponding with the “element B not alloyable with lithium,” reading on “the element B is Cu.”
Response to Arguments
Applicant’s arguments filed March 2, 2026 have been fully considered but they are not persuasive.
First, the applicant alleges the following.
The office action alleged that the argument is not commensurate with the scope of claims, particularly, examples provide only Zn as element A and only Cu as element B, though the claim 1 recites “an element A alloyable with lithium,” and “an element B not alloyable with lithium”.
Nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). See also MPEP 716.02(d). Nonobviousness of a genus may be supported by data showing unexpected results of a species under certain circumstances. Zn is an exemplary element A that is alloyable with Li. Cu is an exemplary element B that is not alloyable with lithium. Applicant submits that an artisan would be able to extend Zn to other lithium alloyable elements such as those in claim 3 and extend Cu to other lithium non-alloyable elements such as those in claim 4.
(Remarks, at 5:4-5:5, bolded underlining added.)
In response, the examiner respectfully notes that the argument is not commensurate with the scope of the claim, as claimed, noting for example the underlined portion of the Remarks, supra. Further noting for example that a dependent claim must further limit the scope of the claim from which it depends.
Second, the applicant alleges the following.
Claim 1 as amended is directed to a composition satisfying all following limitations:
1) element A with a weight percentage in a range from 1 wt% to 10 wt%,
2) element B with a weight percentage in a range from 3 wt% to 15 wt%,
3) total weight percentage of A and B in a range from 5 wt% to 20 wt%, and
4) weight ratio of A/B of 3/7.
The amended claim 1 is directed to a coating of a particular composition defined from various perspectives, particularly by all these four factors with specified range or value. All those four limitations should be evaluated in its entirety, not individually. As shown in Table S1, the composition of the amended claim 1 covers examples 4, 5 and 6. Though examples 1, 2 and 3 are described as “example” in the specification, they are not covered by claim 1. For example, though examples 2 and 3 satisfy “element A with a weight percentage in a range from 1 wt% to 10 wt%”, it is not part of claim 1 because it does not meet “total weight percentage of A and B in a range from 5 wt% to 20 wt%”.
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The office action alleges that Sugimoto severalbly [sic] discloses the particular composition of claim 1. However, Sugimoto covers a very broad range for each parameter, which encompasses a huge volume of possible combinations despite the unknown effectiveness. In contrast, the specific composition of claim 1 of the present invention was explored as effective for the first time in simultaneously achieving a desirable rate performance (discharge capacity at 1C), cycling performance and columbic efficiency (CE).
The office action alleges that the present invention fails to demonstrate “a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree” and that “the reference example and comparative example 3 are similar to those of Example 4, which is within the claimed range”. Applicant respectfully disagrees. Reference Example (Ag/C, 25/75, w/w) exhibits a much worse cycling performance than Examples 4 and 5.
See Fig. 4 of the present application.
As for comparative example 3 (carbon only), we agree with Examiner’s analysis that comparative example 3 exhibits a similar discharge capacity at 0.33 C, discharge capacity at 1C (rate performance), and discharge capacity at 0.33C (2ⁿᵈ cycle). However, comparative example 3 exhibits a much worse cycling performance. Thus, it is incapable of achieving a good cycling performance. See the plots in Fig. S2 below.
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Therefore, among all tested examples (including reference example, comparative examples and supplemental evidence in the response filed July 2, 2025), only examples 4, 5 and 6 can achieve desirable rate performance, cycling performance and columbic efficiency (CE) in a simultaneous manner. The other examples are incapable of achieving all properties at a higher end simultaneously. Tradeoff is well-known for battery development due to complexity and unpredictability. A proposed action may improve a discharge capacity at a low C rate but may not be effective in maintaining or achieving a good discharge capacity at a high C rate or a good cycling performance. The composition as claimed unexpectedly resolves the puzzle and achieves an overall performance with no trade-offs, i.e., a high discharge capacity at 0.33 C, a high discharge capacity at 1C (related to high-rate performance) and a good cycling performance.
(Remarks, at 6:1-8:1, italics, underlining, and bolding in the original.)
In response, the examiner respectfully notes that the instantly provided Figure S2 provides new data that was not provided in the initial disclosure. As a result, said data should be filed in a 37 C.F.R. § 1.132 declaration, and therefore is treated as merely arguments by the applicant, see e.g. MPEP § 716.01(c).
Argument of counsel is insufficient to overcome a prima facie showing of obviousness. Since a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments or evidence to rebut the prima facie case. See e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented by way of an affidavit or declaration under 37 CFR 1.132. However, arguments of counsel cannot take the place of factually supported objective evidence. See e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also MPEP § 2145.
Here, the data that is part of the initial filing includes e.g. Figure 4, incorporated here for ease of reference.
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Within the initially filed data, it appears that examples 4-5 and comparative example 3 may have similar specific capacity retention over 20 cycles.
Third, the applicant alleges the following.
By reciting [0021] of the present application, the office action alleges that it “does not appear to be an indication that more particular ratios of A/B—such as 3/7—are preferred to others”. Applicant respectfully traverses.
The totality of the record must be considered when determining whether a claimed invention would have been obvious. Evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical. In re Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220 (CCPA 1971). The tested examples (including reference example, comparative examples and supplemental evidence in the response filed July 2, 2025) strongly indicate the importance of A/B wt ratio.
The office action further alleges that the present invention does not provide sufficient number of tests to demonstrate criticality of the entire claimed range. In this case, we are demonstrating the criticality of A/B weight ratio of 3/7. According to the original data and supplemental evidence in the response filed July 2, 2025, multiple examples both inside and outside of claimed ratio were tested. The comparison clearly and unambiguously demonstrates the criticality of A/B ratio of 3/7.
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Nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). See also MPEP 716.02(d). With the exemplary data provided above, Applicant submits that an artisan would be able to conclude the criticality of A/B weight ratio of 3/7.
(Remarks, at 6:1-10:3, bolded underlining added.)
In response, the examiner respectfully notes that the instantly provided Table includes at the far right column newly provided data, “Cycling performance,” and the additional data provided in the bottom four rows, were not provided in the initial disclosure. As a result, said data should have been filed in a 37 C.F.R. § 1.132 declaration, and therefore severably are treated as merely arguments by the applicant, see e.g. MPEP § 716.01(c).
Further, the data provided in said “Cycling performance” column include subjective characterizations of “poor,” “Poor in long term,” and “good.” However, no explanation was provided in how such proffered data was determined to be “poor,” “Poor in long term,” and “Good.” For example, it is unclear what is interpreted to be within and without of the scope of “poor” and “good.” Further, it is unclear whether the data for “Poor in long term” is the same as the “good” data in earlier cycles. Furthermore, it is unclear at what cycle may a performance become “poor” in a battery life of “in a long term.” See MPEP, at e.g. § 716.02(b).
Furthermore, there is a lack of data for examples 1-3 and 6, specifically noting the applicant’s arguments that examples 4-5 are different from those of examples 1-3, while lacking data—by denoting “n/a” for “Cycling performance”—for said examples 1-3 and 6.
As noted previously, argument of counsel is insufficient to overcome a prima facie showing of obviousness. Since a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments or evidence to rebut the prima facie case. See e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented by way of an affidavit or declaration under 37 CFR 1.132. However, arguments of counsel cannot take the place of factually supported objective evidence. See e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also MPEP § 2145.
Here, the examiner respectfully notes that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Further, “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” Finally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP, at e.g. §2123.
Here, the art teaches the claimed limitations, as claimed, shifting the burden of going forward to the applicant.
Further, the examiner respectfully notes that the data is not commensurate with the scope of the claims.
Here, the data provides examples 1-6 where element A is represented by only a Zn composition and element B is represented by only a Cu composition.
However, as noted in the July April 3, 2025 final Office action, element A is broadly claimed as “an element A alloyable with lithium” (emphasis added); and, element B is broadly claimed as “an element B not alloyable with lithium” (emphasis added).
The instant specification teaches compositions of element A and element B may be the following, not just the “Zn” of examples 1-6 and “Cu” of examples 1-6.
[0017] In some embodiments, element A is a metal or metalloid. In some embodiments, element A is at least one selected from the group consisting of Ag, Zn, Ti, Cd, Mg, Al, Ga, Si, Ge, In, Sn, Pb, Bi, Sb, and mixtures thereof. In some embodiments, element A does not comprise Ag. In some embodiments when the coating is disposed on an anode, the particles of element A may migrate or move over time within the carbonaceous material to concentrate or agglomerate to an area adjacent to the anode or even into the anode because of the lithium in the anode active material and/or the buildup of lithium at the anode during charging. Too much agglomeration of particles of element A may lead to formation of lithium dendrites and a shortage of a battery cell, and thus in some embodiments, element A has a weight percentage of less than or equal to 17.5% of the coating. In some embodiments, element A has a weight percentage in a range from 1% to 17.5%, from 2.5% to 17.5%, from 5% to 17.5%, from 7.5% to 17.5%, from 1% to 15%, from 2% to 15%, from 3% to 15%, from 4% to 15%, from 5% to 15%, from 7.5% to 15%, from 1% to 12.5%, from 2% to 12.5%, from 3% to 12.5%, from 5% to 12.5%, from 7.5% to 12.5%, from 1% to 10%, from 2% to 10%, from 3% to 10%, from 5% to 10%, from 7.5% to 10%, and any and all ranges and subranges therebetween in the coating. In some embodiments, element A can be also elementary compounds that are capable of alloying with lithium, such as silicon compound and tin alloys. In some embodiments, silicon compound can be SiOx (where 0.5≤x≤1.5). In some embodiments, nonlimiting specific tin alloys include Cu—Sn alloys, Co—Sn alloys and the like. In some embodiments, the coating is free of agglomeration of element A and element B when viewing cross-section of the coating with an SEM.
…
[0019] In some embodiments, element B is at least one selected from the group consisting of Cu, Mo, Ir, W, Co, Ni, Ru, Fe, Se, Ta, Nb, V, Zr, and mixtures thereof. In some embodiments, element B has a weight percentage in a range from 3% to 15% in the coating. In some embodiments, element B has a weight percentage in a range from 1% to 17.5%, from 2.5% to 17.5%, from 5% to 17.5%, from 7.5% to 17.5%, from 1% to 15%, from 2% to 15%, from 3% to 15%, from 4% to 15%, from 5% to 15%, from 7.5% to 15%, from 1% to 12.5%, from 2% to 12.5%, from 3% to 12.5%, from 5% to 12.5%, from 7.5% to 12.5%, from 1% to 10%, from 2% to 10%, from 3% to 10%, from 5% to 10%, from 7.5% to 10%, and any and all ranges and subranges therebetween in the coating.
…[0044] In some embodiments, the coating comprises Cu as element A and Zn as element B with a weight ratio of Cu to Zn of 3:7 and the weight ratio of Cu and Zn to the carbonaceous material is 5:95 and wherein the coating has a thickness of around 15-25 μm.
(Instant specification, at e.gt. ¶¶ 0017, 19, and 44, emphasis added.)
Further, a showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP § 716.02(d). Absent such showing, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” MPEP § 2144.05.
As noted in the April 3, 2025 final Office action, regarding the previously added limitation of element A is “the element A has a weight percentage in a range from 1% to 10% in the coating,” wherein the examples do not provide sufficient data just below and at the lower end point (i.e. 1%) of the claimed range, and just below, at, and just above the upper end point (i.e. 10%) of the claimed range. Further, data was provided outside the claimed range, example 2 (17.5%) and example 3 (12.5%), but indicates the data is within the instant invention by e.g. being an “example.” For purposes of moving prosecution forward, the examiner further notes that no data was provided for the cycling performance of examples 2-3, see the noted “n/a.”
Similarly as noted in the April 3, 2025 final Office action, regarding the previously added limitation of element B, “the element B has a weight percentage in a range from 3% to 15% in the coating,” the examples do not provide sufficient data just below and at the lower end point (i.e. 3%) of the claimed range, and at and just above the upper end point (i.e. 15%) of the claimed range. Further, data was provided outside the claimed range, example 1 (17.5%), but indicates the data is within the instant invention by e.g. being an “example.” For purposes of moving prosecution forward, the examiner further notes that no data was provided for the cycling performance of example 1, see the noted “n/a.”
Similarly as noted in the April 3, 2025 final Office action, regarding the previously amended, previously added limitation of elements A and B, “the total weight percentage of the element A and element B is in a range from 5% to 20% in the coating,” the examples do not provide sufficient data just below and just above the lower end point (i.e. 5%) of the claimed range, and just below and just above the upper end point (i.e. 20%) of the claimed range. Further, data was provided outside the claimed range, example 1 (sum of A and B is 25%), example 2 (sum of A and B is 25%), example 3 (sum of A and B is 25%), but indicates the data is within the instant invention by e.g. being an “example.” For purposes of moving prosecution forward, the examiner further notes that no data was provided for the cycling performance of examples 1-3, see the noted “n/a.”
Regarding the newly amended, previously amended, previously added limitation “the weight ratio of the element A to the element B is 3/7,” there does not appear to be sufficient data just below and/or just above the lower claimed ratio (“3/7”), and just below and/or just above the claimed ratio (“3/7”). For purposes of moving prosecution forward, the examiner further notes that no data was provided for the cycling performance of examples 1 and 6, see the noted “n/a.”
Furthermore, unexpected results for a claimed range, as compared with the range disclosed in the prior art, must be shown by a demonstration of “a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree.” See MPEP § 716.02.
Here, the ratios of examples 2-3, as noted by the applicant are 1 and 7/3, but indicates the data is within the instant invention by e.g. being an “example.” For purposes of moving prosecution forward, the examiner further notes that no data was provided for the cycling performance of examples 1-3 and 6, see the noted “n/a.”
Additionally, regarding examples 4-5 and the supplemental data included in the July 2, 2025 response and comparative example 3, the cycling performance data was notated as being “poor” “Poor in long term,” and “Good.”
However, no explanation was provided in how such proffered data was determined to be “poor,” “Poor in long term,” and “Good.” For example, it is unclear what is interpreted to be within and without of the scope of “poor” and “good.” Further, it is unclear whether the data for “Poor in long term” is the same as the “good” data in earlier cycles. Furthermore, it is unclear at what cycle may a performance become “poor” in a battery life of “in a long term.” See MPEP, at e.g. § 716.02(b).
The applicant’s instantly filed Table is annotated below, merely for illustrative purposes.
PNG
media_image5.png
758
900
media_image5.png
Greyscale
Boxed data is outside the claimed range,
Circled boxes highlights a lack of data.
Furthermore, as noted in the December 3, 2025 non-final Office action, the data for Example 4 has similar discharge capacity properties to those of the Reference Example and Comparative Example 3, noting that the cycling performance property was not filed in a declaration and further noting the lack of explanation of how the provided descriptions “poor,” “Poor in long term,” and “Good” are determined and should be considered.
Finally regarding the newly amended, previously amended, previously added limitation “the weight ratio of the element A to the element B is 3/7,” the instant specification teaches element A and element B may be present in a weight ratio of 1:99 to 50:50, noting there does not appear to be an indication that more particular ratios of A/B—such as 3/7—are preferred to others.
[0021] In some embodiments, the weight ratio of element A to element B is in a range from 1:99 to 50:50. In some embodiments, the weight ratio of element A to element B is in a range from 1:99 to 50:50, from 2:98 to 50:50, from 3:97 to 50:50, from 4:96 to 50:50, from 5:99 to 50:50, from 7.5:92.5 to 50:50, from 10:90 to 50:50, from 15:85 to 50:50, from 20:80 to 50:50, from 1:99 to 55:45, from 2:98 to 55:45, from 3:97 to 55:45, from 4:96 to 55:45, from 5:95 to 55:45, from 7.5:92.5 to 55:45, from 10:90 to 55:45, from 15:85 to 55:45, from 20:80 to 55:45, from 1:99 to 60:40, from 2:98 to 60:40, from 3:97 to 60:40, from 4:96 to 60:40, from 5:95 to 60:40, from 7.5:92.5 to 60:40, from 10:90 to 60:40, from 15:85 to 60:40, from 20:80 to 60:40, and any and all ranges and subranges therebetween.
…
[0073] In a tenth aspect according to any preceding aspect, the weight ratio of element A to element B is in a range from 1:99 to 50:50.
(Instant specification, at e.g. ¶ 0021 and 73, emphasis added.)
Fourth, the applicant alleges the following.
Furthermore, Sugimoto does not recognize the effectiveness of A/B weight ratio and is silent about its importance. Neither does Sugimoto provide any guidance or potential direction. Besides the mere disclosure of usage of those two elements, Sugimoto does not provide any disclosure or evidence indicating there is a relationship between A/B wt ratio and any property while all other factors are within a particularly defined range. As shown in Table 2 and Fig 4, only when the A/B weight ratio is 3/7 while other factors are within a certain range, the batteries of Examples 4-6 could achieve a good rate performance, such as discharge capacity at 1C, without sacrificing other properties such as discharge capacity at 0.33C, coulombic efficiency (CE) and cycling performance.
From the entire disclosure of Sugimoto including all examples therein, it fails to recognize that the overall electrochemical performance could be correlated to A/B weight ratio while the other three limitations are in a desired range. Recognition of this functionality is essential to the obviousness of conducting experiments to further determine and/or optimize a variable. This sort of experiment or guidance would not be suggested by or inferred from the teachings of Sugimoto. Thus, Sugimoto would not have led one of the ordinary skills to arrive the claimed invention based on routine optimization.
Indeed, the data of the present application proved that most of the compositions broadly disclosed in Sugimoto are not functioning. It is the present application that discovers that only when A/B is present at a weight ratio of 3/7, the tradeoff problem could be fully addressed. Therefore, the results are unexpected.
(Remarks, at 9:2-10:3.)
In response, the examiner respectfully notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Here, the examiner respectfully refers supra, noting that a prima facie case of obviousness has been established for the scope of the instant invention, as claimed.
Further, the examine respectfully refers supra regarding the data filed subsequent to the initial filing.
Fifth, the applicant alleges the following.
For at least the reasons set forth above, claim 1 is patentable over Sugimoto and should be allowed. Since claim 1 is allowable, the dependent claims 2-5, 7, 9-11 and 15-21 are also allowable. Accordingly, Applicant respectfully requests that rejections under 35 U.S.C. 103 be withdrawn and the claims 1-5, 7, 9-11 and 15-21 allowed.
(Remarks, at 10:4.)
In response, the examiner respectfully refers supra.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim et al (US 2014/0170504) ; and,
Kim et al (US 2014/0017576).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOSHITOSHI TAKEUCHI whose telephone number is (571)270-5828. The examiner can normally be reached M-F, 8-4.
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/YOSHITOSHI TAKEUCHI/Primary Examiner, Art Unit 1723