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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/20/2026 has been entered.
Status of the Claims
The amendment/remarks submitted 02/20/2026 have been entered and fully considered. Claims 1-9 and 11-19 are pending. Claim 10 is cancelled. Claims 3-4, 9, 11, and 13-14 are amended. Claims 1-9 and 11-19 are examined herein.
Claim Rejections - 35 USC § 102/103
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)(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.
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 1-4, 6-8, 12, 14-16, and 18-19 are rejected under 35 U.S.C. 102(a)(2) as anticipated by US 2023/0378468 A1 (“Katou”) or, in the alternative, under 35 U.S.C. 103 as obvious over US 2023/0378468 A1 (“Katou”) in view of US 2019/0131626 A1 (“Wang”).
Regarding claims 1, 3, 6, and 15, Katou discloses an electrode 10 comprising a core 11 (“electrode current collector”) and an electrode mixture 12 (“electrode layer”) provided on a surface of the core 11 (Abstract; Fig. 1; [0015]-[0016]). The electrode mixture 12 comprises an active material and a fluorine-containing binder (such as PTFE and PVdF) ([0017]). The fluorine-containing binder comprises fibrous PTFE ([0025], [0031]-[0034]). Katou further discloses the electrode mixture is produced by a dry method ([0023], [0044]).
While Katou is silent regarding the QBR as specifically recited in the instant claims 1 and 6, Katou discloses the following: When the electrode mixture 12 is trisected in the thickness direction to specify a first region, a second region, and a third region from a side of the core 11, a content (a) of the PTFE powder in the first region, a content (b) of the PTFE powder in the second region, and a content (c) of the PTFE powder in the third region preferably satisfy −5%≤(c−a)/(a+b+c)≤5%. That is, a difference between: the content (a) of the PTFE powder in the first region, near the surface; and the content (c) of the PTFE powder in the third region, near the core 11, being preferably within a range of ±5%, based on all the contents of the PTFE powder (a+b+c) allows the PTFE powder to be substantially uniformly present in the entire electrode mixture 12 without unevenly presence in a part thereof ([0040]). Given the production method of Katou and the disclosure of the range of (c−a)/(a+b+c), it is the position of the Office that the QBR as claimed is necessarily present. However, even if the QBR is not necessarily present it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed QBR because Katou prefers PTFE powder to be substantially uniformly present in the entire electrode mixture 12 without unevenly presence in a part thereof.
It is deemed that bending resistance is an inherent characteristic and/or property of the specifically disclosed electrode. See, for example, the description of the particle morphology in paragraphs [0025] and [0030]-[0035] and the description of the electrode mixture in paragraphs [0024] and [0046]. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
However, even if the bending resistance is not inherent in the electrode of Katou, the bending resistance would have been obvious over Wang. Wang discloses an electrode comprising a fibrillizable first binder (Abstract; [0051]). Wang discloses the proportions of the first binder material and active material combined in the binder mixture can be selected based on any number of factors including the identities of the binder and active material components, particle sizes, planned processing steps, the desired material properties of the electrode film such as strength and flexibility, and the desired performance characteristics of the electrode, for example, of power and/or energy ([0075]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed bending resistance as Wang discloses the proportions of the first binder material and active material combined in the binder mixture can be selected based on the desired material properties of the electrode film such as strength and flexibility.
Regarding claim 2, modified Katou discloses the electrode of claim 1. Katou further discloses the electrode mixture 12 comprises a conductive agent such as carbon materials ([0018], [0022]).
Regarding claims 4 and 14, modified Katou discloses the electrode of claim 2. Katou further discloses an example wherein the active material (a lithium-transition metal composite oxide) is provided in an amount of 95.2 mass %, the conductive agent (acetylene black) is provided in an amount of 1.0 mass %, and PTFE is provided in an amount of 3.8 mass % based on a total mass of the electrode mixture 12 ([0052]-[0053]). See also the broader discussion in [0020], [0022], and [0024].
Regarding claims 7-8, modified Katou discloses the electrode of claim 2. As discussed above, Kondo discloses the bending resistance test is performed in accordance with JIS K5600-5-1 ([0155]). It is the Office’s understanding that the method recited in instant claim 8 is a restatement of testing procedure in JIS K5600-5-1.
Regarding claim 12, modified Katou discloses the electrode of claim 1. It is deemed that the adhesion strength is an inherent characteristic and/or property of the specifically disclosed electrode. In this respect, MPEP 2112 sets forth the following:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 16, modified Katou discloses the electrode of claim 1. Katou further discloses a non-aqueous electrolyte secondary battery comprising the electrode ([0014]).
Regarding claims 18-19, modified Katou discloses the secondary battery of claim 16. It is deemed that the resistance at 0.1 seconds [claim 18] and 10 seconds [claim 19] are inherent characteristics and/or properties of the specifically disclosed electrode. See the sections of MPEP 2112 cited above.
Claims 5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0378468 A1 (“Katou”) in view of US 2019/0131626 A1 (“Wang”) as applied to claims 1 and 16 above, and further in view of US 2021/0344014 A1 (“Park”).
Regarding claim 5, modified Katou discloses the electrode of claim 1. Katou does not expressly disclose the electrode current collector further comprises a conductive primer layer on at least one surface thereof.
Park discloses an electrode for a lithium secondary battery which includes an electrode current collector; a primer coating layer disposed on at least one surface of the electrode current collector (Abstract). The primer coating layer increases the interfacial resistance between the electrode current collector and the electrode active material layer, and reduces the amount of short-circuit current flowing thorough a nail, even when nail penetration occurs, and thus can improve the safety of a battery ([0016]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the primer coating layer of Park to improve the safety of a battery.
Regarding claim 17, modified Katou discloses the secondary battery of claim 16. Katou does not expressly disclose an energy storage system comprising the secondary battery as a unit cell.
Park teaches that lithium secondary batteries are known to be used as batteries for vehicles due to their high energy density and high output ([0002], [0045]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the secondary battery as a unit cell in an energy storage system as a unit cell because this is a known use of a battery from which one would expect the combination to yield predictable results.
Claims 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0378468 A1 (“Katou”) in view of US 2019/0131626 A1 (“Wang”) as applied to claim 1 above, and further in view of US 2020/0274164 A1 (“Nakano”).
Regarding claims 9 and 11, modified Katou discloses the electrode of claim 1. Katou does not expressly disclose a degree of crystallinity of the fluorine-containing binder is 10% or lower [claim 9] or ranges from 0% to 3% [claim 11].
Nakano discloses an electrode for a non-aqueous electrolyte secondary battery has a current collector and an electrode active material layer arranged on a surface of the current collector (Abstract). The electrode active material layer includes an electrode active material and a binder including polyvinylidene fluoride (PVdF), and the polyvinylidene fluoride (PVdF) is in a non-crystallized state and is included in the range of 0.5 to 3.3% by volume with respect to the total volume of the electrode in the electrode active material layer (Abstract). The PVdF in the non-crystallized state retains the shape of the electrode active material layer and improves the cycle durability of the battery ([0009], [0017], [0157]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of a non-crystallized (i.e. 0% crystallinity) PVdF as taught by Nakano to retain the shape of the electrode active material layer and improve the cycle durability of the battery.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0378468 A1 (“Katou”) in view of US 2019/0131626 A1 (“Wang”) as applied to claim 1 above, and further in view of US 2003/0175588 A1 (“Zhang”).
Regarding claim 13, modified Katou discloses the electrode of claim 1. Katou does not expressly disclose that the fluorine-containing [fibrillized] binder further comprises one or more of polyvinylidene fluoride (PVDF) or polyvinylidene fluoride-co-hexafluoropropylene (PVDF-HFP).
Zhang discloses a cathode composition for a lithium secondary battery (Abstract). The cathode composition comprises binder fibers such as polytetrafluoroethylene, polyvinylidene fluoride, and a vinylidene fluoride copolymer ([0022]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include fibrous PVDF in addition to fibrous PTFE because Zhang shows them to be equivalent binder fibers known in the art for the same purpose. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06(I).
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 and 11-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-21 of copending Application No. 18/691,768 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a patentably indistinct combination of the claims from the reference application. For example, a combination of claims 1 and 8 in the reference application reads on instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 and 11-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,580,197. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a patentably indistinct combination of the claims from the reference application. For example, a combination of claims 1 and 7 in the reference application reads on instant claim 1.
Claims 1-9 and 11-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,603,291. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a patentably indistinct combination of the claims from the reference application. For example, a combination of claims 1, 2, and 9 in the reference application reads on instant claim 1.
Response to Arguments
In view of the amendment to claims 3-4, 9, 11, and 13-14, the claim objection have been withdrawn.
Applicant’s arguments in view of the declaration under 37 CFR 1.132, see Remarks at pp. 8-10 and declaration at paragraphs 5-9 and 11, filed 02/20/2026, with respect Kondo as it applies to the rejection(s) of claim(s) 1-9 and 11-19 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US 2023/0378468 A1 (“Katou”) alone or in view of US 2019/0131626 A1 (“Wang”).
Applicant argues that one would not expect the electrode of Kondo to achieve the bending resistance of 2 to 10 mm Φ. After further consideration, this argument is not persuasive. Declarant states that in their opinion, the process of Katou would produce short, discontinuous fibrilized binder structures, and a sheet containing these would provide limited interparticle bridging and mechanical reinforcement, making it more susceptible to crack initiation and brittle fracture under bending stress. However, it is not clear where the distinction between short and long fibers. The specification is silent regarding the length or aspect ratio of the fibrillized binder. Katou discloses the PTFE powder includes fibrous particles A having an aspect ratio of 1.5 or more at a proportion of 20% to 60% based on all the particles and an average major axis size of the fibrous particles is 1 µm to 20 µm ([0025]). Katou further discloses the aspect ratio of fibrous particle A may be 2 to 20 ([0030]). Katou discloses another embodiment wherein the PTFE powder includes fibrous particles B having an aspect ratio of 5 or more at a proportion of 60% or more based on all the particles, preferably the PTFE powder includes the fibrous particles having an aspect ratio of 5 or more at a proportion of 80% or more based on all the particles. An average minor axis size of the fibrous particle is 1 µm to 20 µm ([0032]). Using these PTFE powders can produce an electrode mixture sheet having good formability and high rupture strength ([0025], [0032]). Katou further discloses the PTFE powder adheres to the particle surface of the coated active material to intertwine with the coated active material; in other words, the PTFE powder present in a net-shape holds the coated active material ([0024]). See also [0046].
However, even if the electrode of Katou does not inherently have the claimed bending resistance, an alternative ground of rejection is presented over US 2019/0131626 A1 (“Wang”).
Regarding the provisional nonstatutory double patenting rejections, applicant’s request to hold the rejections in abeyance is rejected. The provisional nonstatutory double patenting rejections are maintained herein. MPEP 804(I)(B)(1) specifically states: “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance.”
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Scott Carrico whose telephone number is (571)270-5504. The examiner can normally be reached Monday-Friday 9:15AM-6PM 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, Barbara Gilliam can be reached at 571-272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727
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