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 .
DETAILED ACTION
Claims 1-29 are pending in this application, which is a CON of Serial Number 18/627374, currently pending.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
It is noted that the abstract begins with the phrase “The present invention provides”. The examiner suggests its deletion.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
It is noted that the claimed invention is directed to a method of preparing an electrode slurry. The examiner suggests amending the abstract to reflect same.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
It is noted that the claimed invention is directed solely to a method of preparing an electrode slurry. The examiner suggests amending the title to reflect same.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 2, 9, 17-24 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.
In claim 2, the phrase “wherein the first organic solvent and the second organic solvent are the same or different” is deemed confusing as said phrase is not further limiting. The examiner questions whether there is any scenario that the two solvents are not the same or different.
In claim 9 line 1, the phrase “the cathode active material” lacks antecedent basis.
In independent claim 17 line 2-3, from which claims 18-24 depend, the phrase “combining a solid electrolyte … to form a first slurry;” is confusing. The examiner suggests deleting “the combination”.
In claim 17 line 14, the phrase “the dried third slurry comprises the second binder” is deemed confusing as line 10 requires “the third slurry devoid of the second binder”. Clarification and appropriate amendments are required.
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.
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, 5-7, 9-19, 21-29 are rejected under 35 U.S.C. 103 as being unpatentable over Daughenbaugh et al. (2019/0006676) in view of Lust et al. (2017/0191189).
Daughenbaugh teaches a slurry composition of lithium ion electrical storage device (title) in which a slurry composition comprises an electrochemically active material, a binder in an organic medium, a functional polymer, and an electrically conductive agent for use as electrodes (abstract) for electrochemical cells (0002). Specifically, the electrochemically active material is used in an electrode slurry (0020) which can also contain an organic solvent and a binder (0052-0053). However, the reference fails to teach a second slurry, a second solvent, and a second binder.
Lust teaches an electrode slurry having an organic binder and organic solvent (0043). In one embodiment, a second polymer binder in a second solvent is used (claims 1, 3). It would have been obvious to utilize a second binder and a second solvent in the slurry of Daughenbaugh with the expectation of success because Lust teaches of using a second binder and a second solvent in an electrode slurry.
Regarding claim 2, Lust teaches different solvents (0032).
Regarding claim 3, Lust teaches isopropanol (0032), which is a polar organic solvent.
Regarding claim 5, Daughenbaugh teaches esters and aromatic hydrocarbons (0021), which in a non-polar organic solvent.
Regarding claim 6, Lust teaches isopropanol (0032), which is a polar organic solvent.
Regarding claim 7, Daughenbaugh teaches esters and aromatic hydrocarbons (0021), which in a non-polar organic solvent.
Regarding claim 9, Daughenbaugh teaches oxides (0020).
Regarding claim 10, Daughenbaugh teaches carbon (0004) and graphite (0020).
Regarding claim 11, Daughenbaugh teaches epoxy functional polymer and one or more acid functional acrylic polymer (0001).
Regarding claim 12-13, Daughenbaugh teaches polyvinylidene fluoride-hexafluoropropylene (PVDF-HFP) (0004).
Regarding claims 14-15, Daughenbaugh teaches a solvent percentages of up to 80 percent by weight (0051).
Regarding claim 16, Daughenbaugh teaches milling (0053-0054).
In independent claim 17, the applicant requires a current collector and drying. Daughenbaugh teaches a current collector and drying (0128).
In addition, the applicant requires a third slurry. It is noted that Daughenbaugh teaches a slurry (0020) and Lust teaches a second slurry containing a second polymer binder in a second solvent (claims 1, 3) but the prior art references fail to teach a third slurry. It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. To utilize a third slurry would have been obvious in the absence of a showing of criticality.
Regarding claim 18, Daughenbaugh teaches copper (0045).
Regarding claim 19, Lust teaches isopropanol (0032), which is a polar organic solvent.
Regarding claim 21, Lust teaches isopropanol (0032), which is a polar organic solvent.
Regarding claim 22, Daughenbaugh teaches esters and aromatic hydrocarbons (0021), which in a non-polar organic solvent.
Regarding claim 23, Daughenbaugh teaches epoxy functional polymer and one or more acid functional acrylic polymer (0001).
Regarding claim 24, Daughenbaugh teaches polyvinylidene fluoride-hexafluoropropylene (PVDF-HFP) (0004).
In independent claim 25, the applicant requires one or more electrode components such as an electrode active materials, a solid electrolyte, and conductive additive, or a combination thereof. Daughenbaugh teaches a slurry composition of lithium ion electrical storage device (title) in which a slurry composition comprises an electrochemically active material, a binder in an organic medium, a functional polymer, and an electrically conductive agent (abstract).
Regarding claim 26, Lust teaches an electrode slurry having a second polymer binder in a second solvent (claims 1, 3).
Regarding claim 27, Lust teaches isopropanol (0032), which is a polar organic solvent.
Regarding claim 28, Daughenbaugh teaches epoxy functional polymer and one or more acid functional acrylic polymer (0001).
Regarding claim 29, Daughenbaugh teaches polyvinylidene fluoride-hexafluoropropylene (PVDF-HFP) (0004).
Claims 4, 8, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Daughenbaugh et al. (2019/0006676) and Lust et al. (2017/0191189) and further in view of Qian et al. (2022/0293956). The combination of Daughenbaugh/Lust fails to teach the appropriate solvent.
Qian teaches an electrode for a solid state battery (title) in which an electrode slurry has an electrode active material and a solid electrolyte (0077) using isobutyl isobutyrate as a solvent (0100). It would have been obvious to use isobutyl isobutyrate as a solvent in the combination with the expectation of success because Qian teaches of using isobutyl isobutyrate as a solvent.
Regarding claim 8, Qian teaches a sulfide and oxide electrolyte (abstract).
Regarding claim 20, Qian teaches isobutyl isobutyrate as a solvent (0100).
Double Patenting
Double patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-16 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-17 of copending Application No. 18/627374 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The parent application 18/627374 recites “A method for preparing an electrode slurry for use in an electrochemical cell comprising: combining a solid electrolyte with a first binder dissolved in a first organic solvent to form a first slurry; combining the first slurry with an electrode active material and a conductive additive to form a second slurry; and adding a second binder dissolved in a second organic solvent to the second slurry, wherein the addition of the second binder yields precipitation of the first binder” (claim 1), which is exactly the same as pending claim 1 of the instant application. The same issue applies to claims 2-17.
Obviousness 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 17-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-21 of copending Application No. 18/627374 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the third slurry devoid of a second binder is an obvious variation.
Roberts teaches a method for preparing an electrode slurry for use in an electrochemical cell comprising: combining a solid electrolyte with a first binder dissolved in a first organic solvent the combination to form a first slurry; combining the first slurry with an electrode active material and a conductive additive to form a second slurry; adding a second binder dissolved in a second organic solvent to the second slurry; casting the second slurry onto a current collector; coating a third slurry on top of the second slurry, thereby forming an interface between the second slurry and the third slurry, the third slurry being devoid of the second binder; and drying the second slurry and the third slurry; wherein the addition of the second binder causes the first binder to precipitate in the second slurry, and wherein the dried third slurry comprises the second binder (claim 20), which is similar to pending claim 17. However, Roberts fails to teach the third slurry devoid of a second binder. To omit the second binder with its consequent loss of its function is an obvious variation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRET CHEN whose telephone number is (571)272-1417. The examiner can normally be reached M-F 8:30-8:30 MT.
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, Gordon Baldwin can be reached at (571) 272-5166. 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.
/BRET P CHEN/Primary Examiner, Art Unit 1718 01/30/2026