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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 11/03/2025 is acknowledged.
Claims 23-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/03/2025.
Status of the Claims
The amendment submitted 11/03/2025 has been entered and fully considered. Claims 1-30 are pending. Claims 23-30 are withdrawn. Claims 1-22 are examined herein.
Specification
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.
Claim 5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites the limitation "the carbonaceous material" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is noted that “a carbonaceous material” is recited in claim 4. Therefore, for the purpose of compact prosecution, claim 5 will be treated as if it depends from claim 4 for the purpose of this Office action.
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, 3-12, 14-15, and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0352597 A1 (“Chen”) in view of US 2006/0040181 A1 (“Kim”).
Regarding claim 1, Chen discloses a method of forming a separator assembly, the method comprising: combining a first separator 250a, 550a, 750a with an interlayer 260, 560a, 760 (“conductive material”) (Figs. 2, 5, 7; [0035]-[0036], [0069]-[0070], [0083]); coupling a tab to the interlayer 260, 560a, 760 (which is combined with the first separator) ([0048], [0079], [0083]); and disposing a second separator 250b, 550b, 550c, 750c onto the first separator (Figs. 2, 5, 7). As the interlayer is disposed between the first separator and the second separator, the tab is necessarily positioned between the first separator and the second separator.
Chen discloses the tab is coupled to the first separator as discussed above, however, Chen is silent regarding the method/means of connection, that is via a coupling material disposed on the tab.
Kim discloses an electrode assembly (Abstract). Kim discloses tabs 26 and 27 can be coupled to conductive layers, in this case a positive uncoated portion 21c and a negative uncoated portion 23c, though various methods, including but not limited to using a conductive adhesive (“coupling material”) ([0039]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to couple the tab to the first separator via a coupling material disposed on the tab because Kim shows this to be a known method of coupling a tab to a conductive layer from which one would expect predictable results.
Regarding claim 3, modified Chen discloses the method of claim 1. Chen discloses the interlayer 260, 560a, may be formed from a slurry ([0038], [0040], [0073]) which must necessarily be coated, or may be formed by any suitable method on the separator ([0079]). Chen therefore discloses the limitation of the claim with sufficient specificity.
Regarding claims 4-5, modified Chen discloses the method of claim 1. Chen further discloses the interlayer comprises hard carbon, graphite, carbon black, and/or other carbon-containing materials ([0038], [0040], [0048]-[0049], [0072], [0076], [0079], [0083]).
Regarding claim 6, modified Chen discloses the method of claim 1. Chen further discloses the interlayer comprises lithium iron phosphate (LFP) or another cathode material ([0043], [0076], [0083]).
Regarding claim 7, modified Chen discloses the method of claim 1. Chen further discloses a current collector of any other layer may extend between the first separator 550a and the second separator 550b to serve as the third separator 550c and the current collector of the other layer may be formed from aluminum, gold, or platinum ([0079]).
Regarding claim 8, modified Chen discloses the method of claim 1. Chen discloses the interlayer 260, 560a, may be formed from a slurry ([0038], [0040], [0073]) which must necessarily be coated, or may be formed by any suitable method, such as printing or spray coating, on the separator ([0079]). This forming therefore impregnates the layer on which it is coated. Chen therefore discloses the limitation of the claim with sufficient specificity.
Regarding claim 9, modified Chen discloses the method of claim 1. Chen discloses the interlayer 260 includes a bilayer structure ([0038]). The second layer of the bilayer structure corresponds to the interlayer of the instant claim. While Chen is silent regarding which side the tab is formed, forming the tab on a side such that it contacts the interlayer as claimed would amount to selection of one side from among two available sides, each being predictable and from which one would have a reasonable expectation of success.
Regarding claim 10, modified Chen discloses the method of claim 1. As Kim teaches the conductive adhesive is used, the coupling is via lamination.
Regarding claim 11, modified Chen discloses the method of claim 1. While Chen is silent regarding the coupling material covering less than about 50% of a surface of the tab, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to optimize the percentage through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, one would not apply the coupling material beyond the edge of the material to which it is being coupled due to cost and material waste consideration. The amount of the tab that is coupled to the separator affects the strength of the bond. The amount of the tab that extends beyond the separator depends on the specific configuration of the cell, such as how the tab is connected on its other end, the size and configuration of the cell, etc. These factors support the Office’s conclusion.
Regarding claim 12, modified Chen discloses the method of claim 1. Chen discloses the first separator or the second separator includes polyethylene, polyimide, or cellulose ([0026]).
Regarding claim 14, modified Chen discloses the method of claim 1. As discussed above, Kim discloses a conductive adhesive. When the tab is coupled via the conductive adhesive, it is deemed to be merged as claimed.
Regarding claim 15, Chen discloses a method of forming a separator assembly, the method comprising: combining a first separator 250a, 550a, 750a with an interlayer 260, 560a, 760 (Figs. 2, 5, 7; [0035]-[0036], [0069]-[0070], [0083]); coupling a tab to the interlayer 260, 560a, 760 (which is combined with the first separator) ([0048], [0079], [0083]); and disposing a second separator 250b, 550b, 550c, 750c onto the first separator (Figs. 2, 5, 7). As the interlayer is disposed between the first separator and the second separator, the tab is necessarily positioned between the first separator and the second separator.
Chen discloses the tab is coupled to the first separator as discussed above, however, Chen is silent regarding the method/means of connection, that is via a coupling material disposed on the tab.
Kim discloses an electrode assembly (Abstract). Kim discloses tabs 26 and 27 can be coupled to conductive layers, in this case a positive uncoated portion 21c and a negative uncoated portion 23c, though various methods, including but not limited to using a conductive adhesive (“coupling material”) ([0039]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to couple the tab to the first separator via a coupling material disposed on the tab because Kim shows this to be a known method of coupling a tab to a conductive layer from which one would expect predictable results.
Regarding claim 17, modified Chen discloses the method of claim 15. As Kim teaches the conductive adhesive is used, the coupling is via lamination.
Regarding claims 18-19, modified Chen discloses the method of claim 15. Chen further discloses the interlayer comprises hard carbon, graphite, carbon black, and/or other carbon-containing materials ([0038], [0040], [0048]-[0049], [0072], [0076], [0079], [0083]).
Regarding claim 20, modified Chen discloses the method of claim 15. Chen further discloses the interlayer comprises lithium iron phosphate (LFP) or another cathode material ([0043], [0076], [0083]).
Regarding claim 21, modified Chen discloses the method of claim 15. Chen further discloses a current collector of any other layer may extend between the first separator 550a and the second separator 550b to serve as the third separator 550c and the current collector of the other layer may be formed from aluminum, gold, or platinum ([0079]).
Regarding claim 22, modified Chen discloses the method of claim 15. Chen further discloses the interlayer comprises a semi-solid electrode layer containing silica ([0038]-[0040]) or the interlayer comprises lithium titanate (LTO) ([0043], [0076], [0083]).
Claims 2 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0352597 A1 (“Chen”) in view of US 2006/0040181 A1 (“Kim”) as applied to claims 1 and 15 above, and further in view of US 2016/0211503 A1 (“Schemberg”).
Regarding claims 2 and 16, modified Chen discloses the method of claims 1 and 15. Kim discloses a conductive adhesive, as discussed above, but is silent regarding its composition (i.e. the coupling material includes a conductive polymer).
Schemberg discloses a securing device for an electrical arrangement (Abstract). an electrical connection element 4 is coupled with a contact element 3 via an electrically conductive adhesive ([0029]). The electrically conductive adhesive can be a material with inherent electrically conductive properties that is based on or formed by a thermosetting material, for example based on a polyaniline (“conductive polymer”) ([0015]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a conductive polymer as the conductive adhesive because Schemberg discloses it is known in the art as a conductive adhesive and one would expect predictable results from its use.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0352597 A1 (“Chen”) in view of US 2006/0040181 A1 (“Kim”) as applied to claim 1 above, and further in view of US 2022/0006157 A1 (“Nakazawa”).
Regarding claim 13, modified Chen discloses the method of claim 1. Chen discloses the first separator or the second separator includes a ceramic coated separator ([0026]). Chen is silent regarding the second separator including a binder.
Nakazawa discloses a separator for electricity storage devices (Abstract). The separator comprises an insulating layer including inorganic porous layers comprising inorganic particles and a resin that binds the inorganic particles ([0089]). 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 a binder in the ceramic coated layer of the separator to bind the ceramics as taught by Nakazawa.
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 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-43 of copending Application No. 19/183,557 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by claims 14-30 of the reference application and are indistinct from claims 31-43 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-4, 6, 8-11, 14-15, 17-18, and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,100,816 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by or obvious over the claims in the Patent.
Claims 2 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,100,816 B2 in view of US 2016/0211503 A1 (“Schemberg”). Schemberg discloses a securing device for an electrical arrangement (Abstract). an electrical connection element 4 is coupled with a contact element 3 via an electrically conductive adhesive ([0029]). The electrically conductive adhesive can be a material with inherent electrically conductive properties that is based on or formed by a thermosetting material, for example based on a polyaniline (“conductive polymer”) ([0015]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a conductive polymer because Schemberg discloses it is known in the art as a conductive adhesive and one would expect predictable results from its use.
Claims 5, 7, 12, 19, 21-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,100,816 B2 in view of US 2022/0352597 A1 (“Chen”). Chen discloses the interlayer comprises hard carbon, graphite, carbon black, and/or other carbon-containing materials ([0038], [0040], [0048]-[0049], [0072], [0076], [0079], [0083]). Chen further discloses a current collector of any other layer may extend between the first separator 550a and the second separator 550b to serve as the third separator 550c and the current collector of the other layer may be formed from aluminum, gold, or platinum ([0079]). Chen discloses the first separator or the second separator includes polyethylene, polyimide, or cellulose ([0026]). Chen further discloses the interlayer comprises a semi-solid electrode layer containing silica ([0038]-[0040]) or the interlayer comprises lithium titanate (LTO) ([0043], [0076], [0083]). These modification would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because they amount to combining prior art element known in the art to yield predictable results.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,100,816 B2 in view of US 2022/0006157 A1 (“Nakazawa”). Nakazawa discloses a separator for electricity storage devices (Abstract). The separator comprises an insulating layer that ensures electrical insulation, the insulating layer including inorganic porous layers comprising inorganic particles and a resin that binds the inorganic particles ([0089]). 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 the insulating layer of Nakazawa to ensure electrical insulation.
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-5:45PM Eastern.
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Robert Scott Carrico
Primary Examiner
Art Unit 1727
/Robert S Carrico/Primary Examiner, Art Unit 1727