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 .
Information Disclosure Statement
The IDS’ filed 3/18/2024 and 7/29/2026 have been considered by examiner.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-7, drawn to a cathode coating.
Group II, claims 8-9, drawn to a process for the manufacture of the cathode coating.
Group III, claims 10-14 and 16, drawn to a cathode and an all-solid Li-ion storage battery.
Group IV, claim 15, drawn to a process for the manufacture of a Li-ion battery positive electrode.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-IV lack unity of invention because even though the inventions of these groups require the technical feature of a cathode coating consisting of at least one PVDF, at least one lithium salt, and at least one conductivity additive, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Zhang et al. (CN 112599850, referring to examiner-provided translation thereof, hereinafter "Zhang"). Zhang teaches a near-positive electrode solid electrolyte layer (“cathode coating”) including a positive electrode side polymer and a lithium salt [0010]. Zhang teaches that the positive electrode side polymer may be polyvinylidene fluoride (PVDF) [0012]. Zhang teaches that in addition to the positive electrode side polymer and lithium salt, the near-positive electrode solid electrolyte layer may include an additive (“conductive additive”) [0020]. Zhang teaches that the additive may be an ionic liquid or fluoroethylene carbonate [0030].
During a telephone conversation with Duane Stewart on 8/4/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-7. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-16 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.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN 112599850).
Regarding claim 1, Zhang teaches a solid electrolyte composite layer comprising a near-positive electrode solid electrolyte layer (“cathode coating”) [0006]. Zhang teaches that the near-positive electrode solid electrolyte layer includes a near-positive electrode side polymer (“component A”) and a lithium salt (“component B”) [0010]. Zhang discloses that the near-positive electrode side polymer may be polyvinylidene fluoride or polyvinylidene fluoride-hexafluoropropylene (“PVDF”) [0012]. Zhang also teaches that the near-positive electrode solid electrolyte layer may include an additive (“component C”) [0020]. Zhang discloses that the additive may be an ionic liquid or fluoroethylene carbonate [0030]. The ionic liquid and fluoroethylene carbonate may constitute the claimed “conductive additive”, the ionic liquid and fluoroethylene carbonate being the same material taught and claimed in the instant application (see subsequent claim 5, [0056] and [0061] of published application), wherein if the composition is the same, it must have the same properties [see MPEP 2112.01(II)]. Zhang does not teach any additional components in the near-positive electrode solid electrolyte layer, therefore Zhang’s near-positive electrode solid electrolyte layer may consist of only a polyvinylidene fluoride, a lithium salt, and an additive.
Further regarding claim 2, Zhang teaches that the near-positive electrode side polymer may be polyvinylidene fluoride, which is a homopolymer, or polyvinylidene fluoride-hexafluoropropylene, which is a copolymer [0012].
Further regarding claim 4, Zhang teaches that the lithium salt may be lithium perchlorate (LiClO4), lithium hexafluorophosphate (LiPF6), lithium tetrafluoroborate (LiBF4), lithium bis(oxalate-borate) (LiBOB), lithium difluoroborate (LiDFOB), lithium bis(difluorosulfonylimide) (LiFSI), lithium bis(trifluoromethanesulfonylimide) (LiTFSI), or lithium 4,5-dicyano-2-trifluoromethylimidazolium (LiDTI) [0029].
Further regarding claim 5, Zhang teaches that the additive may be an ionic liquid or fluoroethylene carbonate [0030].
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 112599850).
Regarding claim 7, Zhang teaches the near-positive electrode solid electrolyte layer (“cathode coating”) of claim 1, as described in the rejection of instant claim 1. Zhang further teaches that the near-positive electrode solid electrolyte layer may include, by mass fraction, 50-80% of the near-positive electrode side polymer, 10-40% of the lithium salt, both of which are within the recited ranges, and 0-20% of the additive, which overlaps the recited range [0020]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) [see MPEP 2144.05(I)].
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 112599850) as applied to claim 1 above, and further in view of Amano et al. (JPH 1153936, referring to examiner-provided translation thereof, hereinafter “Amano”).
Regarding claim 3, Zhang teaches the near-positive electrode solid electrolyte layer (“cathode coating”) of claim 1, as described in the rejection of instant claim 1. Zhang is silent regarding the PVDF comprising monomer units carry a functional group.
Amano teaches analogous art of a lithium or lithium-ion solid-state secondary battery comprising a solid-state polymer electrolyte [0001; entire disclosure relied upon]. Amano teaches that the solid-state polymer electrolyte comprises a polyvinylidene fluoride compound in which side chains (“monomer units”) have been introduced [0013]. Amano discloses that the compound that forms the side chain may be an aliphatic acrylate [0014], such as isoamyl acrylate, which has a carboxylic acid ester [0015].
Amano teaches that the polyvinylidene fluoride compounds with the disclosed side chains provide excellent mechanical strength and high ionic conductivity [0036].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the PVDF of the near-positive electrode solid electrolyte layer taught by Zhang to include a side chain formed from an aliphatic acrylate as taught by Amano, in order to provide the near-positive electrode solid electrolyte layer with excellent mechanical strength and high ionic conductivity.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 112599850) as applied to claim 1 above, and further in view of Zhao et al. (US 2023/0163421, referring to second named inventor, hereinafter "Zhao").
Regarding claim 6, Zhang teaches the near-positive electrode solid electrolyte layer (“cathode coating”) of claim 1, as described in the rejection of instant claim 1. Zhang is silent regarding the thickness of the near-positive electrode solid electrolyte layer. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) [see MPEP 2144.05(I)].
Zhao teaches analogous art of an interface functional layer (“cathode coating”) that may be provided between a positive electrode and a solid electrolyte [Abstract; entire disclosure relied upon]. Zhao teaches that the thickness of the interface functional layer may be in a range of 10 nm to 10 µm, which overlaps the recited range [0016].
Zhao teaches that when the thickness of the interface functional layer is controlled within this range, the ion-passing rate and electrical conductivity may be better controlled [0016]. Zhao teaches that the interface functional layer improves interface stability between the positive and/or negative electrode and the solid electrolyte [0006]. Zhang teaches that the purpose of the near-positive electrode solid electrolyte layer is also to exhibit good stability at the positive electrode interface with the solid electrolyte [0006].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the near-positive electrode solid electrolyte layer taught by Zhang to have a thickness within the range disclosed by Zhao, in order to better control the ion-passing rate and electrical conductivity and improve the interface stability of the near-positive electrode solid electrolyte layer.
Furthermore, the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) [see MPEP 2144.04(IV)(A)].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA F OROZCO whose telephone number is (571)272-0172. The examiner can normally be reached M-F 9-6.
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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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