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 .
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 1, 4-10, 15, 16, and 31 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2019/0393491 to Hermann (“Hermann”) in view of in view of “Improving Li-ion battery charge rate acceptance through highly ordered hierarchical electrode desing” in Ionics (2018 24:2935-2943 published March 7, 2018 to Sakamoto et al. (“Sakamoto”). Regarding claims 1, 4, 7, 8, 10, 16, and 31, Hermann discloses lithium ion batteries comprising an anode and cathode separated one from another by a separator and electrolyte, where each of the anode and cathode include a conductive substrate coated with active material. Hermann at Abstract and Paragraph [0010]. By definition, a lithium ion battery cathode active material is a material that holds intercalated lithium ions at a potential higher than lithium held in the anode, and when material aside from lithium metal is used in the anode, the anode active material is acting as a lithium host. Here, it is unclear whether the anode of Hermann is graphite or a lithium compound. However, in either instance the material is something other than lithium metal and thus acts as a lithium host.
Hermann’s improvement on the standard lithium ion battery is providing auxiliary channels in both the anode and cathode active material layers such that the channels open at the surface that interfaces with the separator and extend all the way to the collector, thereby allowing thicker electrodes to be made while still maintaining high output characteristics. Id. at Abstract and paragraph [0003].
The goal of increasing the thickness is to arrive at a battery having greater areal capacity, in particular having a loading greater than 4mAh/cm2, while still maintaining high current, including levels as high as 8 mAh/cm2. Id. at paragraph [0003] and [0018]. The channels are tubular vertical channels with a circular cross-section. Id. at paragraph [0030] and Figs 4 and 7c. Hermann also discloses that conical shaped channels may be used in its invention, it is unclear whether the taper is towards the separator or towards the collector (or either).
Nonetheless, Sakamoto is similarly directed towards improving the rate properties of lithium ion batteries formed with thick electrode layers by providing those active material layers with auxiliary channels. Thus, the person of ordinary skill in the art at the time of invention would have recognized the particular laser ablation technique of Sakamoto to be nothing more than an obvious alternative means of forming the desired auxiliary channels of Hermann. Moreover, Sakamoto discloses the use of laser ablation to form the channels, which results in tapered channels having a wider cross-sectional area at the end nearest the separator, and a narrower cross-sectional area at the end closer to the collector/further from the separator. Sakamoto at Abstract and Figure 3b. Thus, because the method of Sakamoto is considered to be nothing more than an obvious alternative method of forming auxiliary channels, and because that method necessarily leads to channels having the recited taper structure, the Office finds that structure to be obvious.
Further regarding claim 5, Hermann does not disclose the spacing of the auxiliary channels of its anode or cathode. Nonetheless, Hermann discloses that the purpose of its channels is to increase current characteristics of thick electrodes. Moreover, Hermann describes a similar prior art system that focuses only on providing pores in the anode. Hermann discloses that those pores are spaced apart by 100 microns. Thus, because Hermann discloses similar anode systems that work well with channel spacing of 100 microns and because Hermann provides guidance regarding the reason to control the channel size/locations of its electrodes, the Office finds that the person of ordinary skill in the art at the time of invention would arrive at a spacing ranging from 10 to 200 microns through routine experimentation based on the successful spacing used in prior art systems, and the property sought to be improved via channel formation in Hermann.
Further regarding claim 6, Hermann discloses that the diameter of its auxiliary channels preferably ranges from 20-500 microns, a range that so substantially overlaps with the recited range as to anticipate the recited range.
Further regarding claim 9, the claim is in product-by-process form. Although Hermann does not disclose use of laser to pattern the auxiliary channels, there is no evidence of record that laser-patterning necessarily leads to a structure different from the printing/patterning/physical puncturing methods disclosed in Hermann. Moreover, even if arguendo there is a difference, Sakamoto discloses laser-patterning.
Further regarding claim 15, Hermann discloses various known solution coating techniques for formation of its electrodes, including printing, spraying, and doctoring. Id. at paragraph [0011].
Claims 2, 3, 11, 12, 14, 17-21, 23-27, 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Hermann and Sakamoto in view of U.S. Patent Application Publication No. 2020/0212437 to Yao (“Yao”). Hermann is applied as described above. Further regarding claims 2, 3, 17, 19-21, 23-25, and 30, Hermann does not explicitly disclose the use of lithium-based cathode active material that stores intercalated lithium. However, various lithium cobalt oxide compounds were commonly known cathode active materials for use in lithium-ion batteries. Accordingly, the use of those materials as the cathode active materials in the lithium-ion batteries of Hermann is considered to be nothing more than the obvious use of a commonly known material for its intended purpose. Yao at paragraph [0082].
Further regarding claims 11, 14, 18, 26, and 29, Hermann does not expressly disclose its lithium ion battery having a carbonaceous anode active material, or a lithium titanate anode active material. However, the use of graphite in combination with either hard carbon or lithium titanate is known as a means of balancing lithium ion path length during charge/discharge.
Further regarding claims 12 and 27, based on the teachings of Yao that hard carbon and graphite are included as a means of tuning the resident times of first and second depths of an anode respectively, the Office finds the relative amount of one or the other recited in claims 12 and 27 is nothing more than the obvious product of routine experimentation in arriving at desired resident times of those layers.
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 17, 20, 22-24, and 26-29 are rejected on the ground of nonstatutory double patenting as
Being unpatentable over claims 1-10 of U.S. Patent No. 11,626,583. Although the claims at issue are not identical, they are not patentably distinct from each other because although the pending claims are slightly broader or differing scope than any one particular claim in the ‘583 patent, all of the elements included in the pending claims are incorporated in one form or another in the claims of the ‘583 patent.
Claims 1, 4, 5, and 8-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,626,583 in view of Hermann. Although the claims at issue are not identical, they are not patentably distinct from each other because Hermann discloses that providing ancillary channels in both the anode and cathode is even more beneficial than simply providing ancillary channels in the anode as recited in the claims of the ‘583 patent.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,626,583 in view of Yao. Although the claims at issue are not identical, they are not patentably distinct from each other, they are not patentably distinct from each other because as noted above (and in the previous rejection) Yao establishes that various lithium cobalt oxide compounds were commonly known cathode active materials for use in lithium-ion batteries.
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Response to Arguments
Applicant's arguments filed December 22, 2025, have been fully considered but they are not persuasive. First Applicant raises concerns regarding the prosecution history of Hermann. Namely that some of its claims were rejected for lacking enablement. Applicant does not clearly argue, much less make an attempt to establish, that Hermann is not enabling with respect to the present claims. Thus because Applicant hasn’t attempted to argue, much less done so in a persuasive manner, this discussion is considered irrelevant. Nonethess, a few points are noted. First, the decisions made in a previous Office Action are not binding on the Office – particularly here where the rejection was never appealed, much less appealed successfully. Additionally, as Applicant’s representative is surely aware, enablement is a question that is only relevant to particular claims, and the claims of the present application are different from those rejected for lack of enablement in Hermann. Additionally, the effective filing date of the present application is significantly different from that of Hermann meaning that the knowledge of the person of ordinary skill in the art at the time of invention is broader than it was in examination of Hermann. Also highly relevant is the fact that despite the rejection for lack of enablement, the Examiner in Hermann nonetheless found claims therein to be anticipated and/or obvious over the teachings of the prior art, a finding that could only happen if the Examiner considered the person or ordinary skill in the art at the time of invention to be able to make/use at least part of the scope of the claimed invention of Hermann.
Applicant next notes the deficiencies that have previously been identified for Sakamoto a an anticipatory reference. However, Sakamoto is used in combination with Hermann in the present rejection and as such arguing its deficiencies individually is not persuasive.
Applicant then argues that Sakamoto would not be seen as an alternative means of forming auxiliary channels in an electrode compared to the method of Hermann because the method of Sakamoto differs from that of Hermann. This argument is illogical. Of course the method used in Sakamoto differs from that of Hermann, otherwise it would not be an alternative method. Applicant ha not come up with a compelling reason why the person of ordinary skill in the art at the time of invention would not expect the method for forming channels in the electrode of Sakamoto to similarly form channels in the electrode of Hermann, where both Hermann and Sakamoto disclose the same reason for forming channels in the electrode.
Applicant takes issue with the Examiner’s finding that there is no evidence of record suggesting that the structure of Hermann necessarily differs from one formed via laser-patterning. Applicant provides attorney arguments against this finding, but does not present any actual evidence. Thus, the argument is not found persuasive because it is not supported by evidence.
Applicant next argues that Hermann doesn’t disclose modifying the anode or cathode via the recited methods because the recited methods are used to create solid material that is later removed to result in channeled electrodes. It is unclear how the result of a channeled as compared to the non-channeled electrode that would be formed absent the use of those techniques, is not a modification of the electrode.
Finally, Applicant argues that the disclosed pore spacing is different from the channel spacing. This argument is falsely premised on the notion that the pore spacing is considered to correspond to the channel spacing in the rejection. It is not. It is used merely as supporting evidence in combination with Hermann’s teachings regarding the reason for including its channels to establish that the recited range of spacing was an obvious region of examination while trying to determine a channel spacing/density that would provide the benefit taught by Hermann.
Regarding the double patenting rejection, claims 9 and 10 of the reference patent disclose tapering the channels in the recited manner. Regarding new claim 32, while it is a new claim, it is nonetheless nothing more than a composite of previously claimed subject matter and thus its rejection is not considered to be a new ground since its rejection is based on material already cited to and applied in the same manner in the previous rejection.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/WYATT P MCCONNELL/Examiner, Art Unit 1727