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 .
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.
Claims 1-9 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “An electrode sheet for an all-solid state secondary battery, comprising: […], and the electrode sheet for an all-solid state secondary battery” (emphasis added). The claim is indefinite as to whether the same “electrode sheet” is intended for two distinct ‘all-solid state secondary batteries’ or the same “all-solid state secondary battery”. Claims 2-9 are also rejected as depending on claim 1.
Claim 3 recites “the polymer (A) has the following acidic functional group or a salt thereof, <acidic functional group> a carboxy group, a phosphate group, a phosphonate group, a phosphinate group, and a sulfonate group” (emphasis added). The claim is indefinite as to whether the claim intends for any acidic functional group to be present, specific acid groups of a “a carboxy group, a phosphate group, a phosphonate group, a phosphinate group, and a sulfonate group”, some combination thereof, some distinct variant thereof, etc.
Claim 2 (dependent on claim 1) recites the limitation "the polymer anchored portion". There is insufficient antecedent basis for this limitation in the claim since it is indefinite as to whether "the polymer anchored portion" of claim 2 is intended to refer back to “an insulating the polymer anchored portion” of claim 1, or a distinct ‘polymer anchored portion’ thereof.
Claim 5 (dependent on claim 1) recites the limitation "the inorganic solid electrolyte". There is insufficient antecedent basis for this limitation in the claim since it is indefinite as to whether "the inorganic solid electrolyte" of claim 5 is intended to refer back to “an inorganic solid electrolyte (B)” of claim 1, or a distinct ‘inorganic solid electrolyte’ thereof.
Claim 9 (dependent on claim 1) recites “An all-solid state secondary battery comprising: a positive electrode; a negative electrode; and a solid electrolyte layer between the positive electrode and the negative electrode, wherein at least one of the positive electrode or the negative electrode is composed of the electrode sheet for an all-solid state secondary battery according to claim 1” (emphasis added). Claim 9 is indefinite as to whether ‘an all-solid state secondary battery’ is intended to refer back to the “all-state secondary battery” of claim 1, or distinct one or more ‘all-solid state batteries’.
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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ozawa et al (US 2021/0083299).
With respect to claim 1, Ozawa discloses fig. 2 an electrode sheet for an all-solid state secondary battery (Abstract; para 0054 and 0113-0114), wherein fig. 2 depicts the electrode sheet comprises: an electrode active material layer [2] or [4] on at least one surface of a collector [1] or [5] (para 0113-0114 and 0118), wherein the electrode active material layer [2] or [4] includes an inorganic solid electrolyte having an ion conductivity of a metal from Group 1 or 2 of the Periodic Table and an active material (para 0124-0150). Ozawa further discloses the electrode sheet comprises an “easily adhesive layer” [23] at an “interface” between either: collector [1] and electrode active material layer [2], or collector [5] and electrode active material layer [4] (fig. 1 para 0113-0114, 0118; and 0651-0653), wherein fig. 1 depicts the easily adhesive layer [23] comprises an insulating polymer anchored portion of a polymer having a “solubility (25oC) of 1 g/100 g or higher” in water (para 0087-0090, 0107, and 0653), wherein the polymer in the easily adhesive layer [23] is 50% by mass or more (para 0099).
With respect to claim 2, Ozawa suggests for the insulating polymer anchored portion to not contain conductive particles by having the polymer comprises “100 mass %” of the easily adhesive layer [23] (para 0088-0090 and 0099).
With respect to claim 3, Ozawa further discloses the polymer has an acidic functional group (para 0088-0090, 0093, and 0223-0224).
With respect to claim 4, Ozawa further discloses the polymer comprises conductive particles (para 0100-0101 and 0159-0162), which includes a salt having a basic functional group (para 0057, 0129-0135, 0173-0178, 0308-0311, and 0338-0343)
With respect to claim 5, Ozawa further discloses the inorganic solid electrolyte is a sulfide-based inorganic solid electrolyte (para 0124-0150, 0396-0397, and 0415-0416).
With respect to claim 6, Ozawa further discloses the polymer includes at least one of a (meth)acrylic polymer or a vinyl polymer (para 0088-0093).
With respect to claims 7 and 8, Ozawa further discloses the electrode active material layer [2] or [4] contains a binder (para 0113-0114, 0118, and 0123-0124), wherein the binder contains one of (meth)acrylic polymer or vinyl polymer (para 0168-0171, 0200-0201, 0274, and 0278).
With respect to claim 9, Ozawa further discloses in fig. 2 an all-solid state secondary battery comprising: a positive electrode [4],[5]; a negative electrode [1],[2]; and a solid electrolyte [3] (para 0054; 0472-0473), wherein at least one of the positive or negative electrodes [4],[5] or [1],2] is composed of the electrode sheet as discussed above for claim 1.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,955,643. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-17 of the US Patent would also meet the requirements set forth in claims 1-9 of the current invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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