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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/10/2024 is being considered by the examiner.
Claim Objections
Claims 1, 2, and 5 are objected to because of the following informalities:
Claim 1 includes the limitation “a ratio of a major diameter to a minor diameter of the inorganic particles”. Since diameter refers to the length of a line crossing a circle and passing through the circle center, it is not apparent how a single particle can have both a minor diameter and a major diameter. Further clarification is required. In light of the as filed specifications [pg. 31 lines 18-20], the examiner has interpreted this limitation to refer to the average aspect ratio of a single particle instead of the ratio of diameters between different particle sizes. If referring to the aspect ratio, please refer to the measurement as such.
Claims 1 and 2 refer to D50, D50 (B), and D50 (A) as particle diameters, but it is not specified if these diameters refer to the major or minor diameters of the particles.
Claim 2 recites the limitation “a ratio B/A of D50 (B)/D50 (A)”. B and A from the cited ratio “B/A” are not defined previously or later in the claim, while D50 (B) and D50 (A) are defined. The examiner has interpreted the limitation to read “a ratio D50 (B)/D50 (A)”.
Claim 5 recites the limitation "the positive electrode mixture layer includes inorganic particles" in line 4 of claim 5. The “inorganic particles” could be referring to the inorganic particles recited in claim 1 or a new recitation of inorganic particles. For the purposes of examination, the examiner has interpreted line 4 of claim 5 to read “the positive electrode mixture layer includes the inorganic particles”, where “the inorganic particles” refers to the inorganic particles of claim 1.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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, 3, and 8 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2, and 11 of co-pending Application No. 19/306806 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
Regarding claims 1 and 3 of the instant application, claim 1 of the co-pending application recites a positive electrode for a non-aqueous electrolyte rechargeable battery, the positive electrode comprising a positive electrode mixture layer (positive electrode active material) and first particles (inorganic particles), where the first particles comprise a boron nitride. The ratio of the major axis (major diameter) to the minor axis (minor diameter) of the inorganic particles is greater than or equal to about 3 and less than or equal to about 30. The particle size of the inorganic particles is equal to about 0.01 µm and less than or equal to about 8 µm. This range encompasses the range given in claim 1 of the instant application of greater than or equal to about 0.3 µm and less than or equal to about 8 µm.
Claim 2 of the co-pending application re-states all the limitations of claim 1 in the co-pending application and therefore reads on all the limitations of claims 1 and 3 in the instant application.
Regarding claim 8 of the instant application, claim 11 of the co-pending application recites a non-aqueous electrolyte rechargeable battery, comprising a positive electrode, a negative electrode, a separator, and a non-aqueous electrolyte solution (non-aqueous electrolyte) where the positive electrode is the positive electrode of claim 1.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Iwama et. al (US 20140295263) which was included in the Information Disclosure Statement (IDS).
Regarding claims 1 and 3, Iwama teaches a secondary battery with a cathode (positive electrode), anode, separator, and electrolyte where the electrolyte contains a non-aqueous electrolyte solution [0013, 0082-0083]. The cathode includes a cathode active material layer (positive electrode active material) [0013]. Iwama also teaches that the cathode contains a plurality of thermally-conductive particles which include boron nitride [0014, 0113-0114]. The thermally-conductive particles correspond to the claimed inorganic particles, and the boron nitride particles correspond to the inorganic particles and the inorganic particles including boron. The average particle diameter of the boron nitride particles (D50) is given as 0.45-30 µm [Table 6]. The ratio of the major diameter to the minor diameter of the inorganic particles, which is interpreted as the aspect ratio of the boron nitride particles, varies from 0.09-7.14 [Table 6, Table 7]. The ranges taught by Iwama, therefore, overlap the claimed ranges for D50 and the aspect ratio. In the case where the claimed ranges overlap or lie inside similar ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 2, Iwama teaches all the limitations of claim 1 as described above. Iwama further teaches that the ratio between the average particle size (D50 B) of the thermally-conductive particles (inorganic particles) and the average particle size (D50 A) of the cathode active material (positive electrode active material) is 0.08-1.16 [Table 1]. In the case where the claimed ranges overlap or lie inside similar ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 6, Iwama teaches all the limitations of claim 1 as described above. Iwama further teaches that the anode and cathode are located opposed to each other with the separator in between [0013]. The cathode (positive electrode) includes a cathode current collector (positive electrode current collector) and a cathode active material layer (positive electrode mixture layer) [0013]. Since the cathode active material layer is interposed between the cathode current collector and the separator, the cathode active material reads as being on the cathode current collector [0013].Iwama teaches that a cathode covering layer 90 also contains the thermally-conductive particles (inorganic particles) [0139]. This cathode covering layer (temperature increase suppression layer) is located between the cathode active material layer and the separator [139, Figure 6]. Since the cathode covering layer is next to the cathode on the side opposite the cathode current collector, the cathode covering layer is also on a side of the positive electrode mixture layer opposite the positive electrode current collector. Liu teaches one embodiment of the cathode covering layer as having a dry weight ratio of 1:1 of boron nitride to a binder [0216]. Therefore, the content of the inorganic particles based on 100 weight percent (wt. %) of the temperature increase suppression layer is 50 wt. %. This value reads on the claimed range of about 40 wt. % to about 99 wt. %.
Regarding claim 8, Iwama teaches all the limitations of claim 1 as described above. Iwama further teaches that the positive electrode is contained in a non-aqueous electrolyte secondary (rechargeable) battery [0013]. The battery has a positive electrode, a negative electrode, a separator, and a non-aqueous electrolyte [0013, 0082-0083].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Iwama et. al (US 20140295263) which was included in the Information Disclosure Statement (IDS), as applied to claim 1 above, and further in view of Angizi et. al (Energy environ. Mater. 2024, 7e12777).
Regarding claim 4, Iwama teaches all the limitations of claim 1 as described above. Iwama further teaches that the thermally-conductive particles (inorganic particles) are included in the positive electrode to improve the safety of the battery by dissipating heat and suppressing ignition, breakage, and the like caused by self-heating of the secondary battery [0097]. The more surface area overlap that the inorganic particles have, the heat is more easily conducted between adjacent particles [0133]. It follows that higher surface area is beneficial to increased heat dissipation. Iwama does is silent on the specific surface area of the inorganic particles.
Angizi teaches that boron nitride can be used in the positive electrode of a lithium-ion secondary battery [pg. 1]. The boron nitride corresponds to the inorganic particles including boron of claim 1. The boron nitride, specifically hexagonal boron nitride, can have a specific surface area of 5-30 m2/g [pg. 4]. The motivation behind using boron nitride in the cathode for a secondary battery is the that boron nitride has excellent thermochemical stability, high ion exchange rates, and superior thermal conductivity [pg. 1]. These properties result in improved mechanical stability, enhanced interfacial interactions, and elevated temperature performance of the cathode (positive electrode) [Figure 2]. Also, in the case where the claimed ranges overlap or lie inside similar ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the positive electrode taught by Iwama with the teachings of Angizi to have inorganic particles in the positive electrode where the BET surface area of the inorganic particles is about 1 m2/g to about 50 m2/g. The motivation to use this material is to have inorganic particles with sufficient overlap between particles to increase surface area contact and increase heat dissipation.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Iwama et. al (US 20140295263) which was included in the Information Disclosure Statement (IDS), as applied to claim 1 above, and further in view of Fujita et. al (US 20170149051).
Regarding claim 5, Iwama teaches all the limitations of claim 1 as described above. Iwama further teaches that the positive electrode includes a cathode current collector (positive electrode current collector) and a cathode active material layer (positive electrode mixture layer) [0013]. Iwama teaches that the cathode active material layer is located on one or both sides of the cathode current collector [0050], and the cathode active material layer can contain the thermally-conductive particles (inorganic particles) and a binder [0013, 0051]. Therefore, the cathode active material of Iwama corresponds to the claimed positive electrode which includes a positive electrode current collector and a positive electrode mixture layer on the positive electrode current collector, and where the positive electrode mixture layer includes the inorganic particles. Iwama teaches that the weight ratio of inorganic particles to binder in a cathode covering layer is 1:1 [0216], but Iwama does not explicitly teach that the content of the inorganic particles is about 0.1 wt. % to about 5.0 wt. % with respect to the cathode active material layer.
Fujita teaches a positive electrode with a positive electrode active material for a secondary battery with a non-aqueous electrolyte [0014, 0068]. Fujita teaches that the positive electrode contains a lithium complex oxide, a highly thermal conductive compound that may be boron nitride (BN), and graphene [0044]. When the lithium complex oxide corresponds to the positive electrode active material and the thermal conductive compound corresponds to the inorganic particles with boron, the combination of the lithium complex oxide and the thermal conductive compound corresponds to the claimed positive electrode mixture layer in the positive electrode. Fujita teaches that the loading of the thermal conductive compound relative to the lithium complex oxide is 0.05 to 10 wt. % and preferable 0.1 to 5 wt% [0046-0047]. When the weight of the highly thermal conductive compound relative to the lithium complex oxide is more than 0.05 wt %, the heat generated during charging can escape more efficiently and cycle characteristics are improved [0046]. When the weight of the highly thermal conductive compound relative to the lithium complex oxide is not more than 10 wt %, a decrease in energy density can be suppressed [0046]. In the case where the claimed ranges overlap or lie inside similar ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the positive electrode taught by Iwama with the teachings of Fujita to have a positive electrode with a current collector and positive electrode mixture layer on the positive electrode current collector where the positive electrode mixture layer includes boron inorganic particles where the content of the inorganic particles based on 100 wt. % of the positive electrode mixture layer is about 0.1 wt % to about 5.0 wt. %. The motivation to use this weight percent of inorganic particles is to ensure that heat generated by the battery can escape to improve the cycle characteristic while retaining high energy density.
Regarding claim 7, Iwama teaches all the limitations of claim 6 as described above. Iwama further teaches that thickness of the separator has a total thickness of 25 µm [0210]. Iwama does not explicitly teach the thickness of the separator covering layer, which corresponds to the claimed temperature increase suppression layer.
Fujita teaches a positive electrode with a positive electrode active material for a secondary battery with a non-aqueous electrolyte [0014, 0068]. Fujita teaches that the positive electrode contains a lithium complex oxide (positive electrode mixture layer) and may be coated with a coating layer that contains a thermally conductive compound, graphene, and multilayer graphene [0022]. The thermally conductive compound can be BN (boron nitride) [0045]. Fujita teaches that purpose of this coating layer is to allow the heat generated during charging to escape efficiently [0044]. When the thermally conductive compound is BN, it corresponds to the inorganic particles containing boron, and the coating layer corresponds to the temperature increase suppression layer. Fujita further teaches that the coating layer including the highly thermal conductive compound (temperature increase suppression layer) has an average film thickness of 0.03 to 0.3 µm [0025]. The purpose of using this thickness for the temperature increase suppression layer is to optimize the heat insulation and ion conduction properties of the layer which prevents the degradation of the positive electrode active material and increase the battery cycle characteristics [0025]. When the layer is too thick there is a decrease in ion conductivity to the positive electrode, and when the layer is too thin the heat from battery operation cannot be effectively dissipated [0027]. Also, in the case where the claimed ranges overlap or lie inside similar ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the positive electrode taught by Iwama with the teachings of Fujita to have a positive electrode with a temperature increase suppression layer with a thickness of about 0.1 µm to about 5.0 µm. The purpose of using this thickness is to preserve ion conductivity while allowing for heat to dissipate and preserve optimal function of the battery.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE R ALTVATER whose telephone number is (571)270-3162. The examiner can normally be reached M-R 8:00 am - 4 pm.
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/N.R.A./Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
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