DETAILED ACTION
Response to Amendment
Amendments to the specification and claims, filed on April 26, 2024, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Analysis
The present application contains two active independent claim(s) (claims 1 and 12) and thirteen active dependent claims (claims 2 – 11 and 13 - 15).
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Regarding the limitation(s) “different shapes” in claim 1, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, different shapes mean macroscopic shapes; e.g. nanotubes, fibers, powders, etc.
Regarding the limitation(s) “different types” in claim 2, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, different types mean both different materials (metallic vs carbon, for example), as well as different forms of carbon; e.g. carbon black, carbon fibers, carbon nanotubes, graphite, graphene, etc. would all be considered different ‘types’ of conductive material.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Specification
The amended specification filed April 26, 2024 has been entered into the file record.
Claim Objections
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (though note the 112(b) rejection on claim 9, below).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The term “flatten” in claim 9 is a relative term which renders the claim indefinite. The term “flatten” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What one artisan may take as being sufficiently improving to consider the cathode surface “flattened” would not necessarily be the same for another artisan, absent an explicit measurement/magnitude of roughness, thickness variation across the surface, etc.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) The claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 8 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by IDS reference Umeyama et al. (U.S. Patent App. No. 2017/0256788 A1).
Regarding claim 1, Umeyama et al. disclose a cathode (Title; Abstract; positive electrode), the cathode comprising: a metal current collector (Figure 2, element 13A and examples); an inner granular powder layer (element 113) that is located on one surface of the metal current collector and includes an active material, a conductive material, and a binder in the form of a granular powder (Paragraph 0026 and examples); and an outer granular powder layer (element 213) that is stacked on a surface of the inner granular powder layer (as shown in Figure 2) and includes the active material, a conductive material, and the binder in the form of a granular powder (Paragraph 0026 and examples), wherein the conductive material included in the inner granular powder layer and the conductive material included in the outer granular powder layer have different shapes from each other (Figure 3 and Paragraphs 0041 – 0054 and examples 2 and 3).
The limitation(s) “for an all-solid-state battery” is (an) intended use limitation(s) and is not further limiting in so far as the structure of the product is concerned. Note that in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See MPEP Form Paragraph 7-37-09. In the instant case, the choice of the electrolyte, be it a non-aqueous solvent-type as in Umeyama et al. or a solid-state one, as recognized in the art, does not result in a structural difference to the claimed electrode structure and a skilled artisan would recognize any potential differences as obvious; i.e. the disclosed Umeyama et al. structure is capable of performing its intended use as an electrode in an all-solid-state battery with no manipulative (non-obvious) differences.
Regarding claims 2 - 5, Umeyama et al. disclose different shapes in the two layers meeting the claimed limitations as noted above (conductive carbon black powder (point-shaped particles) versus carbon nano-tubes or fibers (linear) – see Paragraphs 0041 – 0054 and Figure 3 and examples).
Regarding claim 6, Umeyama et al. disclose controlling the relative thickness values to overlapping/encompassing ranges (at least Paragraph 0039 and examples).
Regarding claim 7, Umeyama et al. disclose active material reading on these conventional Li-ion battery active materials (at least Paragraph 0027 and examples).
Regarding claim 8, Umeyama et al. disclose binder material reading on these conventional binders (at least examples).
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 8 and 10 – 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Umeyama et al. as applied above, and further in view of Iwasaki (U.S. Patent App. No. 2014/0057180 A1) as evidenced by Ohta et al. (U.S. Patent App. No. 2020/0328428 A1).
Umeyama et al. is relied upon as described above.
Regarding claims 1 – 8, while the Examiner maintains that Umeyama et al. anticipates these claims for the reasons recited above, the Examiner acknowledges that Umeyama et al. does not disclose the intended use/preamble limitation “for an all-solid state battery”.
However, Iwasaki teaches a substantially identical battery structure using a granule-type electrode layer for the cathode and anode, wherein the electrolyte is a solid-state electrolyte and is both added to the granules (Title; Abstract; and at least Paragraphs 0048 -0055) as well as being disposed as a layer between the anode and cathode (Paragraphs 0068 – 0069).
Regarding claims 10 – 15, Umeyama et al. fails to teach the solid electrolyte recited in these claims; however, Iwasaki teaches the solid electrolyte as noted above.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Umeyama et al. to meet the requirements of an “all-solid state battery” and the explicit recitation of the solid electrolyte as recited in claims 10, 11, 13, 14 and 15 as taught by Iwasaki, as using a solid electrolyte versus a non-aqueous electrolyte is well established in the arts as providing improved safety and performance (Iwasaki – Paragraph 0003).
Claims 2 – 5 are met for the reasons set forth above without any additions in this rejection.
Claim 6 is met as recited above, but the Examiner also deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the relative thickness values, regardless of how measured, of the individual layers through routine experimentation, especially given the teaching in Umeyama et al. regarding the similar thickness ranges recited above (i.e. the layers do not need to be equal thickness). In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 7 is met as recited above, but the Examiner also takes Official Notice that these are conventional active materials for lithium ion batteries and are art recognized as functionally equivalent (for support of the Examiner’s position, one need only review the IDS and cited art applied herewith). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the various classes of active materials recited in claim 7 are functional equivalents in the field of known active materials for lithium-ion secondary batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Claim 8 is met as recited above, but the Examiner also takes Official Notice that these are conventional binder materials for lithium ion batteries and are art recognized as functionally equivalent (for support of the Examiner’s position, one need only review the IDS and cited art applied herewith). Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, the various classes of binder materials recited in claim 8 are functional equivalents in the field of known binder materials for lithium-ion secondary batteries. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Regarding claim 10, as noted above, Iwasaki discloses coating the granule particles with the solid electrolyte (see citations above), which would necessarily result in solid electrolyte located between the particles in the two layers (as Iwasaki teaches encompassing coating layers, not coating only one side of the particles).
Regarding claim 11, Iwasaki discloses sulfide-based solid electrolytes (see citations above).
Regarding claim 12, Iwasaki is relied upon to teach forming the active material, binder and conductive aid (per Paragraphs 0056) as the granules to form the electrode layer. The rest of the method is met by the methodology disclosed in Umeyama et al. (see examples), except Umeyama et al. fails to explicitly teach rolling the layers. However, the Examiner takes Official Notice that rolling the layers when forming an electrode using a solid electrolyte, active material, etc. is known in the art as a conventional processing step to provide smooth, properly packed layers, as evidenced by Ohta et al. (at least Paragraph 0090).
Regarding claim 13, Iwasaki discloses the solid electrolyte in each layer as noted above, and (necessarily) between the layers as the coating of the solid electrolyte is all-encompassing around the particles of each layer, thereby meeting the claimed limitations. Regarding a drying step, the Examiner takes Official Notice that the active material composition is generally a paste when applied and that drying is conventional when forming an electrode using such a solid electrolyte, active material, etc.. This is evidenced by Ohta et al. (at least Paragraph 0090).
Regarding claims 14 and 15, Iwasaki discloses the claimed solid electrolyte in the electrode layer(s) as well as between the anode and cathode, as discussed above.
Allowable Subject Matter
Claim 9 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action. The following is a statement of reasons for the indication of allowable subject matter: claim 9 requires a specific structure wherein the point-shaped conductive material is uniformly located in a gap between the granular powders of inner layer. This specific structural requirement is neither taught nor rendered obvious by the prior art of record, which fails to provide any specificity with regard to the location of the point-shaped conductive material relative to the granular powder of the inner layer as claimed in claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
February 7, 2026