DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. Applicant's submission filed on 12/29/2025 has been entered. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
It is noted that claim 73 incorporates the subject matter of claim 1 such that any statement applicable to claim 1 is simultaneously applicable to claim 73 (outside of prior art rejections).
Applicant cancelled claims 3 and 21-29; all rejections applied against these claims are automatically withdrawn.
Priority
2. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
Applicant amends claim 1 as follow and alleges:
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Applicant does not explain how the range of “at least 90 wt.% of a dry active material” within claim 1 is supported by the provisional application. The paragraphs cited do not teach the feature. The range has no upper limit. As previously pointed out:
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Furthermore, it is noted that the weight ranges recited are not taught relative to anything (e.g., the weight percentages are not defined relative to the sum of all components recited in the single dry electrode film, or relative to any one component). For example, the claim requires 1.5-4 wt% of a dry binder, wherein both the specification and the claim fail to recite whether this is based on the total sum of the components, or is just relative to the amount of one singular component such as the dry active material. This allows for the sum of components to add to more than a total of 100 such that the upper limit is not intrinsically 100 wt% or 100 wt% less the other recited amounts. The prior art defines weight percentages both ways such that there is not necessarily a standard with respect to which one is being utilized.
Arguendo, even if one was to assume that the sum of all components combined is 100 wt%, and the weight percentage ranges defined are all relative to the collective sum, the range of “at least 90 wt%” is still not supported. For example, if 1.5 wt% dry binder is required, this allows for 98.5 wt% dry active material. The ranges recited in the provisional do not extend to this value. It is noted that the ranges taught include 70-98 wt%; 70-92 wt%; 70-96 wt% (P56). In the elected embodiment of the anode, these ranges are 80-98 wt%, 80-98 wt%, and 94-97 wt% (P57). The range presented in the claim reads on, for example, 98.5 wt% dry active material, which is not supported by these original ranges.
Thus, the only ranges found by the Examiner with respect to the weight percent of the active material are in P56-57, and they are not commensurate in scope with “at least 90 wt%.” Accordingly, this claim, and all claims are still not accorded the provisional date of the priority application.
Accordingly, the effectively filed date of the claims of the instant application is 11/8/2018 (that of the instant, non-provisional application).
Applicant alleges the effectively filed date of all claims as amended are that of the provisional. It is noted the Examiner can also not find at least claims 14 and 19 within the provisional.
Applicant alleges claim 19 is within P56. P56 supports that there may be about 1-5 wt% of a porous carbon material in the non-elected embodiment of the cathode electrode film; the provisional does not support the broader construct claimed of a single dry electrode film of claim 1 that can be an anode or cathode, and that the porous material can be any porous material (i.e., carbon not specified). The single species teaching does not provide an adequate basis for the genera claimed.
With respect to claim 14, and all claims, a broad allegation that all claims are supported without proper citation support is not persuasive. It might be helpful for Applicant to map all their limitations claimed to the provisional by paragraph number so that a proper support analysis is undertaken versus solely addressing limitations pointed out by the Examiner. Given at least one limitation in claim 1 is not supported by the provisional, the issue is moot with respect to the dependent claims.
Claim Analysis
3. An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999); MPEP 2111.01, Section IV.
The Applicant has provided their own definitions to the following phrases (P95-99 of the PGPUB): voltage, self-supporting, “solvent-free,” “wet” electrode and “wet process”
Accordingly, these explicit definitions will control the interpretations of these phrases, respectively, as the phrase is used in the claim.
Claim Objections
4a. The objections to claims 4 and 21-29 are withdrawn in view of either the correction provided or cancellation thereof.
4b. Claims 1 and 33 as amended are objected to: “2000” should be “2,000”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claim 1, and thus dependent claims 4, 6-8, 13-19, 33, 72; claim 4; and claim 73 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 73 incorporates the subject matter of claim 1 as an independent claim and is addressed concurrently with claim 1.
Applicant amended the claim 1 limitation of “…an electrode material loading of 15-100 mg/cm2…” to “a material loading of 15-100 mg/cm2”. Previously the limitation of “an electrode material loading” was rejected as being indefinite because it was not clear whether the claimed “an electrode material” is:
a new entity not previously recited in the claims;
the collective whole of all “electrode materials” (i.e., dry active material + binder + other non-claimed entities not present in claim 1 such as conductive agent, etc. – all of which are electrode materials and would contribute to “an electrode material loading”); OR
a failure in invoking proper antecedent basis to one of the previously recited “electrode materials” presented in the claim (e.g., the dry active material or the dry binder).
The Examiner noted in the prior rejection addressing this issue with respect to “an electrode material loading of at least 15 mg/cm2…”: “Consistent with the instant application at P79, it appears that it the issue is a failure to properly invoke reference to the already recited “dry active material.”
Instead, Applicant amended this to simply “a material loading” which is not supported. As outlined in option 2 above, “a material loading” could be any one material presented in the electrode film (i.e., the dry active material, the dry binder, or other non-claimed entities not present in claim 1 such as a conductive agent), or it could be the combination/sum of all materials present (i.e., dry active material + binder + other non-claimed entities not present in claim 1 such as conductive agent, etc.). The provisional which Applicant relies on for support for the limitation teaches “an active material loading” has the range claimed—not the binder, and not the sum of materials. This is also taught at P79 of the instant application PGPUB. Accordingly, in order to be supported (as indicated in the prior rejection pertaining to this feature), this loading range claimed would require reference to the dry active material recited. Accordingly, the range recited for “a material loading” (which could be the dry binder or the sum of all materials) is not supported by the provisional or the instant application. This issue compounds in claim 4 which limits the range of “the material loading.”
Appropriate correction is required.
7. The prior Office Action rejections of claim 1, and thus dependent claims3-4, 6-8, 13-19, 33, and 72; claim 3, and thus dependent claim 33; claim 4; claim 13, and thus dependent claim 14; claim 14; claim 21, claim 22, claim 23, claim 24, and thus dependent claim 25, claim 26, claim 27, claim 28, claim 72; and claim 73, and thus dependent claims 21-29, 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 are withdrawn in view of either the amendments filed or cancellation of the claims.
Claim Rejections - 35 USC § 102
8. Rejection A: The rejection of claims 1, 4, 6-7, 72-73 under 35 U.S.C. 102(a)(1) as being anticipated by Walsh et al., “Dry-Processed Binder-Free Holey Graphene Electrodes for Supercapacitors with Ultrahigh Areal Loadings,” ACS Appl. Mater. Interfaces 2016, 8, 29478-29485 (copy previously provided) is withdrawn in view of the amendments filed. All rejections pending from this are also withdrawn.
Claim Rejections - 35 USC § 103
9. Rejection 1: The rejection of claims 1, 4, 6-8, 13, 15-17, 33, and 72-73 under 35 U.S.C. 103 as being unpatentable over Zhong et al. (US 2013/0157141) in view of Zhamu et al. (US 2017/0207484) is maintained, and the rejection is further optionally made in view of Walsh et al., “Dry-Processed Binder-Free Holey Graphene Electrodes for Supercapacitors with Ultrahigh Areal Loadings,” ACS Appl. Mater. Interfaces 2016, 8, 29478-29485 (copy provided) (hereinafter, “Walsh” in the headings of the rejections).
Regarding claims 1 and 4, Zhong teaches a single dry electrode film (abstract; title; P16, 84, 105, Fig. 1a; entire disclosure relied upon), comprising:
50-99% activated carbon (“a dry active material”) (the taught range overlapping with the claimed range of “at least 90 wt% of a dry active material”) (P23, 34); and
1-50 % fibrillizable fluoropolymer (“a dry binder comprising a fibrillized binder”) (the taught range overlapping with the claimed range of “1.5-4 wt% of a dry binder comprising a fibrillized binder”) (P23, 34, 69);
wherein the single dry electrode film is self-supporting (i.e., “free-standing”) (P21, 23, 111) and is free of solvent-residue (P18, 22, 69, 71, 105; Fig. 1a; entire disclosure directed to solvent-free, dry processing), and
wherein the single dry electrode film comprises a thickness of between 10 µm and 2 mm (=2,000 µm) (overlapping with the claimed range of “110-2,000 µm”) (P21).
Zhong is silent as to “a material loading” of the single dry electrode film (i.e., “the single dry electrode film comprises a material loading of 15-100 mg/cm2”).
In the same field of endeavor of providing an electrode film (intended as an anode for a lithium ion battery – not presented in the scope of the independent claim but noted for completeness), Zhamu teaches analogous art of an anode active material layer (“electrode film”) and that the anode active material constitutes an electrode active material loading (i.e., one option for “a material loading”) of no less than 20 mg/cm2, preferably no less than 25 mg/cm2, and more preferably no less than 30 mg/cm3. For the cathode (also applicable given Zhong teaches the electrode film construct may be an anode or a cathode, among other types of electrode films), Zhamu teaches that the cathode active material has an electrode active material mass loading of no less than 10 mg/cm2, preferably greater than 15 mg/cm2 and more preferably greater than 20 mg/cm2 (P94-100).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the single dry electrode film of Zhong with a given electrode active material mass loading depending upon its final use (e.g., as an anode, a cathode, a capacitor electrode, fuel cell electrode, etc.), and to look to known active material loadings taught in the prior art that are suitable ranges of active material mass loadings for a given construct such as those taught by Zhamu, said ranges overlapping with that claimed (i.e., “at least 15 mg/cm2” – claim 1; “at least 20 mg/cm2” – claim 4), thereby establishing a prima facie case of obviousness.
Optional Walsh Reference
It is the position of the Examiner that a person having ordinary skill in the art would be immediately apprised of how to achieve a desired electrode material loading by way of providing a desired mass of material in a given area and/or calendaring the material; however, Applicant contends that a person having ordinary skill in the art would not be apprised of how to achieve this with a reasonable expectation of success. For this reason, the Walsh reference is optionally applied.
Walsh teaches analogous art of a dry-processed, single dry electrode film comprising holey graphene (“dry active material”) that is free-standing, and free of solvent residue (entire disclosure relied upon; specifically see p. 29479-29481). Walsh teaches that the area mass loading of the single, dry electrode films is manipulated based on the starting electrode mass (i.e., how much material is first provided), as well as the pressure applied to these masses, with wide areal mass loading range of ~1-30 mg/cm2 achieved per electrode (p.29481).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention, to utilize the known technique taught by Walsh with respect to manipulating areal mass loading of a dry electrode film by way of the amount of starting material utilized and/or pressure applied, to the dry electrode film of Zhong to achieve the desired areal mass loading ranges taught by Zhamu.
Additional Comments on Ranges Taught by Zhong
It is also noted that at P137, additional ranges for the dry active material (graphite) and dry, fibrillized binder are taught as 80-96% and 4-10%, respectively, and at P138, additional ranges for the dry active material (lithiated metal oxide) and fibrillizable binder are taught at 50-96% and 0.5 to 50%, respectively. See also P84 teaching the ranges of 80-90% activated carbon and 3-15% binder, and that for a particular application, different particles and different combinations may be used “and that the determination of such would be within the scope of those skilled in the art” (P136).
Regarding the taught and claimed ranges, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05). Additionally, the courts have held:
“[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); MPEP 2144.05.
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382
Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions. In re Hoeschele,406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
A change in form, proportions, or degree “will not sustain a patent.” Smith v. Nichols, 88 U.S. 112, 118-19 (1874).
“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929).
Thus, in addition to the taught ranges of Zhong establishing a prima facie case of obvious for each of the claimed ranges, in the absence of new or unexpected results for which objective exists and which is fully commensurate in scope with the claim, it would have been an entirely obvious expedient to one having ordinary skill in the art at the effective filing date of the invention to discover where in the disclosed set of ranges is the optimum range by routine experimentation for the desired end product (e.g., an electrode within a capacitor, battery, fuel cell, etc.) and the corresponding selected specific active material. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; MPEP § 2144.05.
Regarding claim 6, Zhong teaches wherein the dry active material comprises an anode active material (P136-142; see also claims 96-105 of Zhong).
Regarding claim 7, Zhong teaches wherein the anode active material comprises a carbon active material (P136-142; see also claims 96-105 of Zhong).
Regarding claim 8, Zhong teaches wherein the carbon active material comprises graphite (P136-142; see also claims 96-105 of Zhong).
Regarding claim 13, Zhong teaches wherein the dry binder comprises at least one of polytetrafluoroethylene (PTFE), carboxymethylcellulose (CMC), and polyvinylidene fluoride (PVDF) (see claim 114 of Zhong; see P84).
Regarding claim 15, Zhong teaches wherein the single dry electrode film comprises
1-50 % fibrillizable fluoropolymer (“dry binder comprising a fibrillized binder”) (the taught range overlapping with the claimed range of “1.5-3 wt% of the dry binder”) (P23, 34).
Regarding claim 16, Zhong teaches wherein the single dry electrode film further comprising a conductive additive (P23).
Regarding claim 17, Zhong teaches wherein the single dry electrode film comprises at between 0-30 wt% conductive carbon (overlapping with the claimed range of “1-3 wt% of the conductive additive”) (P23), thereby establishing a prima facie case of obviousness.
In addition to the taught range of Zhong establishing a prima facie case of obvious for the claimed range, in the absence of new or unexpected results for which objective exists and which is fully commensurate in scope with the claim, it would have been an entirely obvious expedient to one having ordinary skill in the art at the effective filing date of the invention to discover where in the disclosed set of ranges is the optimum range by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; MPEP § 2144.05.
Regarding claim 33, Zhong teaches wherein the thickness is between 10 µm and 2 mm (=2,000 µm) (overlapping with the claimed range of “155-2,000 µm”) (P21).
Regarding claim 72, Zhong teaches wherein the single dry electrode film comprises
50-99% activated carbon (“a dry active material”) (the taught range overlapping with the claimed range of “94-98 wt.% of the dry active material”) (P23, 24).
Regarding claim 73, Zhong teaches an energy storage device (P136), comprising an electrode, wherein the electrode comprises:
a current collector (P21, 136); and
the single dry electrode film of claim 1 (see claims 96-116 of Zhong; see P70-71,136-142).
It is noted that both the described capacitor and battery embodiments read on the claimed “energy storage device,” and the described capacitor electrodes, anode, and cathode constructs also all read on the claimed “electrode.”
10. The rejection of claim 14 under 35 U.S.C. 103 as being unpatentable over Zhong et al. (US 2013/0157141) in view of Zhamu et al. (US 2017/0207484) and optionally Walsh as applied to at least claims 1 and 13 above, and further in view of Wang et al. (US 2019/0131626) is maintained.
Regarding claim 14, Zhong teaches wherein the dry binder may comprises polytetrafluoroethylene (PTFE), and that the choice of binder is dictated by its melting point, metal adhesion, electrochemical and solvent stability in the subsequently used electrolyte, with the invention of Zhong “not being limited by the disclosed and suggested binders” (P106).
Zhong fails to explicitly teach the use of PTFE, carboxymethylcellulose (CMC), and polyvinylidene fluoride (PVDF) in a ratio of 2:1:1 by weight. In the same field of endeavor, Wang teaches analogous art of a dry electrode film (P31) that includes 96 wt% graphite (“dry active material”) and dry binder, and teaches that the dry binder can comprise various suitable ratios of polymeric components, and teaches the specific embodiment of PTFE, CMC, and PVDF having a weight percent of 2 wt%, PTFE, 1 wt% CMC, and 1 wt% PVDF (P64).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to look to known, suitable binder compositions and ratios, suitable for use in a dry electrode film and select the known composition of 2:1:1 PTFE: CMC: PVDF for the binder of Zhong as taught by Wang in order to provide a binder suitable to for use therewith given Zhong teaches the selection of the binder is selected for its melting point, metal adhesion, electrochemical and solvent stability in the subsequently used electrolyte, with the invention of Zhong “not being limited by the disclosed and suggested binders” (P106), the selection of PTFE: CMC: PVDF providing a binder composition that meets these needs for a given final construct (e.g., battery, capacitor, etc.).
11. The alternative rejection of claim 14 under 35 U.S.C. 103 as being unpatentable over Zhong et al. (US 2013/0157141) in view of Zhamu et al. (US 2017/0207484) and optionally Walsh as applied to at least claims 1 and 13 above, and further in view of Liu (US 2017/0288209) is maintained.
Regarding claim 14, Zhong teaches wherein the dry binder may comprises polytetrafluoroethylene (PTFE), and that the choice of binder is dictated by its melting point, metal adhesion, electrochemical and solvent stability in the subsequently used electrolyte, with the invention of Zhong “not being limited by the disclosed and suggested binders” (P106).
Zhong fails to explicitly teach the use of PTFE, carboxymethylcellulose (CMC), and polyvinylidene fluoride (PVDF) in a ratio of 2:1:1 by weight. In the same field of endeavor, Liu teaches analogous art of electrode films that include an active material and binder in similar or same amounts, and the binder may be PVDF, PTFE, CMC, or combinations thereof (P60).
Therefore, the selection of these three binders for use as the dry binder of Zhong is considered prima facie obvious given the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)); MPEP § 2144.07).
Zhong as modified by Liu fails to explicitly disclose the weight ratio of said components relative to one another when used in combination; however, in the absence of new or unexpected results for which objective exists that is fully commensurate in scope with the claim, determining workable or optimum amounts of these components in order to provide an overall binder with the desired properties as taught at P106 of Zhong is considered routine experimentation.
12. The rejection of claims 18-19 under 35 U.S.C. 103 as being unpatentable over Zhong et al. (US 2013/0157141) in view of Zhamu et al. (US 2017/0207484) and optionally Walsh as applied to at least claims 1 and 13 above, and further in view of Kawakami et al. (US 2017/0200943) is maintained.
Regarding claims 18 and 19, Zhong teaches wherein the single dry electrode film further comprises 0 to 10% carbon black or conductive carbon (P137-138). Zhong does not explicitly teach said conductive additive is a porous conductive additive; however, the use of porous conductive additive in the claimed construct is a well-known feature as taught by Kawakami (P76).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to select as the conductive additive of Zhong that of a porous conductive carbon as taught by Kawakami given the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)); MPEP § 2144.07), thereby also providing the additional, predictable results of an entity that is both electrically conductive and capable of increasing the materials ability to retain electrolyte (if used in a final construct with electrolyte).
13. Rejection 2: The rejection of claims 1, 4, 6-7, 13, 15-17, 72, and 73 under 35 U.S.C. 103 as being unpatentable over Mitchell et al. (US 2005/0186473) in view of Zhamu et al. (US 2017/0207484), and optionally further in view of Walsh et al., “Dry-Processed Binder-Free Holey Graphene Electrodes for Supercapacitors with Ultrahigh Areal Loadings,” ACS Appl. Mater. Interfaces 2016, 8, 29478-29485 (copy provided) (hereinafter, “Walsh” in the headings of the rejections) is maintained.
Regarding claims 1, 4, 6-7, 13, 15-17, Mitchell teaches a single dry electrode film 104 (Fig. 1; P37), comprising:
a dry active material (including activated carbon) (P37); and
a dry binder comprising a fibrillized binder (including PTFE) (P35-37);
conductive carbon in the amount of 2-10 wt% (P35),
wherein the single dry electrode film is 150 μm in thickness (P32) (anticipating the claimed range of “a thickness of 110-2,000 μm”),
wherein the single dry electrode film comprises 85-90% by weight or 85-93% by weight activated carbon (claimed range: “at least about 90 wt.% of the dry active material”),
wherein the single dry electrode film comprises 5-8% by weight, or 3-8% by weight binder (claimed range: “1.5-4 wt.% of the dry binder”),
wherein the single dry electrode film is substantially free of solvent residue (P37: no liquid or solvent is used such that the electrode film is free of impurities which can degrade lifetime and performance of the electrode”).
Mitchell is silent as to “a material loading” of the single dry electrode film (i.e., “a material loading of 15-100 mg/cm2”). In the same field of endeavor of providing an electrode film (intended as an anode for a lithium ion battery – not presented in the scope of the independent claim but noted for completeness), Zhamu teaches analogous art of an anode active material layer (“electrode film”) and that the anode active material constitutes an electrode active material loading of no less than 20 mg/cm2, preferably no less than 25 mg/cm2, and more preferably no less than 30 mg/cm3. For the cathode (also applicable given Zhong teaches the electrode film construct may be an anode or a cathode, among other types of electrode films), Zhamu teaches that the cathode active material has an electrode active material mass loading of no less than 10 mg/cm2, preferably greater than 15 mg/cm2 and more preferably greater than 20 mg/cm2 (P94-100).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the single dry electrode film of Mitchell with a given electrode active material mass loading depending upon its final use (e.g., as an anode, a cathode, a capacitor electrode, fuel cell electrode, etc.), and to look to known active material loadings taught in the prior art that are suitable ranges of active material mass loadings for a given construct such as those taught by Zhamu, said ranges overlapping with that claimed (i.e., “at least 15 mg/cm2”- claim 1; “at least 20 mg/cm2” – claim 4)), thereby establishing a prima facie case of obviousness.
Optional Walsh Reference
It is the position of the Examiner that a person having ordinary skill in the art would be immediately apprised of how to achieve a desired electrode material loading by way of providing a desired mass of material in a given area and/or calendaring the material; however, Applicant contends that a person having ordinary skill in the art would not be apprised of how to achieve this with a reasonable expectation of success. For this reason, the Walsh reference is optionally applied.
Walsh teaches analogous art of a dry-processed, single dry electrode film comprising holey graphene (“dry active material”) that is free-standing, and free of solvent residue (entire disclosure relied upon; specifically see p. 29479-29481). Walsh teaches that the area mass loading of the single, dry electrode films is manipulated based on the starting electrode mass (i.e., how much material is first provided), as well as the pressure applied to these masses, with wide areal mass loading range of ~1-30 mg/cm2 achieved per electrode (p.29481).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention, to utilize the known technique taught by Walsh with respect to manipulating areal mass loading of a dry electrode film by way of the amount of starting material utilized and/or pressure applied, to the dry electrode film of Mitchell to achieve the desired areal mass loading ranges taught by Zhamu.
Regarding claim 72, Mitchell teaches the amount of activated carbon may be 85-93% (P35), thereby rendering the claimed range prima facie obvious given the closeness of the taught range to the claimed ranges. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Regarding claim 73, Mitchell teaches an energy storage device comprising an electrode, the electrode comprising: a current collector 102; and the single dry electrode film of claim 1 (entirely incorporated into the instant rejection of record).
14. Rejection 3: The rejection of claims 1, 4, 6-8, 13, 14-15, and 72-73 under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2019/0131626) in view of Zhamu et al. (US 2017/0207484), and optionally further in view of Walsh et al., “Dry-Processed Binder-Free Holey Graphene Electrodes for Supercapacitors with Ultrahigh Areal Loadings,” ACS Appl. Mater. Interfaces 2016, 8, 29478-29485 (copy provided) (hereinafter, “Walsh” in the headings of the rejections) is maintained.
Regarding claims 1, 4, 6-8, 13-15, 72, Wang teaches a single dry electrode film (P31), comprising:
96% graphite (anticipating the range claimed of “at least 90 wt% of a dry active material”) (P95); and
2% PTFE, 1% CMC, and 1% PVDF, cumulatively 4 wt. % dry binder (the individual and cumulative values each anticipating the range claimed of “at most 4 wt% of a dry binder”), wherein the binder can be fibrillizable (P50);
wherein the single dry electrode film is free-standing (P51) and is free of solvent-residue (P78; achieved by dry processing), and
wherein the single dry electrode film may comprises a thickness of “about 200 microns, “about 250 microns” (anticipating the range of 110-2,000 µm).
Wang is silent as to an electrode material loading of the single dry electrode film (i.e., “an electrode material loading of at least 15 mg/cm2”). In the same field of endeavor of providing an electrode film (intended as an anode for a lithium ion battery – not presented in the scope of the independent claim but noted for completeness), Zhamu teaches analogous art of an anode active material layer (“electrode film”) and that the anode active material constitutes an electrode active material loading of no less than 20 mg/cm2, preferably no less than 25 mg/cm2, and more preferably no less than 30 mg/cm3. For the cathode (also applicable given Zhong teaches the electrode film construct may be an anode or a cathode, among other types of electrode films), Zhamu teaches that the cathode active material has an electrode active material mass loading of no less than 10 mg/cm2, preferably greater than 15 mg/cm2 and more preferably greater than 20 mg/cm2 (P94-100).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to configure the single dry electrode film of Wang with a given electrode active material mass loading depending upon its final use (e.g., as an anode, a cathode, a capacitor electrode, fuel cell electrode, etc.), and to look to known active material loadings taught in the prior art that are suitable ranges of active material mass loadings for a given construct such as those taught by Zhamu, said ranges overlapping with that claimed (i.e., “at least 15 mg/cm2”; “at least 20 mg/cm2” – claim 4)), thereby establishing a prima facie case of obviousness.
Optional Walsh Reference
It is the position of the Examiner that a person having ordinary skill in the art would be immediately apprised of how to achieve a desired electrode material loading by way of providing a desired mass of material in a given area and/or calendaring the material; however, Applicant contends that a person having ordinary skill in the art would not be apprised of how to achieve this with a reasonable expectation of success. For this reason, the Walsh reference is optionally applied.
Walsh teaches analogous art of a dry-processed, single dry electrode film comprising holey graphene (“dry active material”) that is free-standing, and free of solvent residue (entire disclosure relied upon; specifically see p. 29479-29481). Walsh teaches that the area mass loading of the single, dry electrode films is manipulated based on the starting electrode mass (i.e., how much material is first provided), as well as the pressure applied to these masses, with wide areal mass loading range of ~1-30 mg/cm2 achieved per electrode (p.29481).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention, to utilize the known technique taught by Walsh with respect to manipulating areal mass loading of a dry electrode film by way of the amount of starting material utilized and/or pressure applied, to the dry electrode film of Wang to achieve the desired areal mass loading ranges taught by Zhamu.
Regarding claim 73, Wang teaches an energy storage device comprising an electrode, wherein the electrode comprises a current collector and the single dry electrode film of claim 1 (P22-23, P45-52; entire disclosure relied upon).
Response to Arguments
15. Applicant's arguments filed 12/29/2025 have been fully considered. Any arguments pertaining to maintained rejections are reproduced below:
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In response: It is noted this identical argument is presented with respect to Rejections 2 and 3 given Zhamu is applied in all three rejections. Accordingly, all of these rejections are addressed concurrently with respect to the identical arguments against Zhamu in the arguments filed.
With respect to the emphasized “high electrode material loading” above (both by Applicant and the underlined portion by the Examiner), this is not commensurate in scope with what is presented in claim which is now amended to a broader limitation of “a material loading” which could be the sum of all materials present versus the dry active material component (see rejection under 35 U.S.C. 112(a)/first paragraph).
The process of making of Zhamu is entirely immaterial to the product claim under examination as it is not required or pertinent in achieving the material loading feature. The primary reference to Zhong has all of the features claimed except is silent as to a specific “material loading” feature. Zhamu teaches a desired range for this feature for electrode films of the prior art, and the optional Walsh feature teaches how to manipulate the feature by way of either providing a desired mass of material in a given area and/or calendaring the film. The wet or slurry based method of manufacture of Zhamu is irrelevant to the product claim of the instant application because the wet slurry based method of manufacture (or the dry method of manufacture for that matter) is not what is required to achieve the material loading feature. The dry electrode of Zhamu could simply be configured by way of providing the desired amount in a given area from the first place, and/or calendered to the desired degree of material loading as would be immediately known to one skilled in the art (and also as taught by the optional reference to Walsh) such that there is no need for any wet slurry process to be utilized to achieve the material loading feature. Accordingly, the argument is not persuasive and the rejection maintained.
Applicant repeats the argument for unexpected results:
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In response: The Examiner is not clear where Applicant is obtaining the requirement that unexpected results must be compared to the actual disclosure of “a single and unmodified reference” as emphasized above. Nonetheless, the “creation” of electrode film of claim 1 is not a new or unexpected result. A single dry electrode film with taught values and/or overlapping ranges as that claimed for a dry active material and a dry binder comprising fibrillized binder are taught in each of the primary references, as is a teaching that the electrode films are free-standing, free of residue, and having a thickness value or range claimed. The only deficiency for each primary reference relevant to the claim is with respect to “material loading feature,” and as previously noted (emphasis added):
Electrode material loading is an incredibly easy feature to manipulate in the constructs of any of Zhong, Mitchell, or Wang- either the feature is already present (not necessarily intrinsic- no such rejection is made, it is just a possibility given all other claim limitations are met), or all that would be required to manipulate this feature is to provide the construct as taught by these references (i.e., a single dry electrode film that is free-standing, free of solvent, has the component(s) in the ranges claimed) and either provide enough of said active material in a given area to meet the desired active material loading desired, and/or compress the material to meet the desired area loading desired. This is taught Walsh et al., “Dry-Processed Binder-Free Holey Graphene Electrodes for Supercapacitors with Ultrahigh Areal Loadings,” ACS Appl. Mater. Interfaces 2016, 8, 29478-29485 (copy provided), Walsh teaching how starting with different electrode masses (i.e., different starting amounts of materials) and compressing them provided for electrodes with areal mass loading range of ~1-30 mg/cm2 per electrode (p.29481) depending on the pressure utilized, and the starting mass.
It is the position of the Examiner that a person having ordinary skill in the art would be immediately apprised of how to achieve a desired electrode material loading by way of providing a desired mass of material in a given area and/or calendaring the material; however, Applicant contends that a person having ordinary skill in the art would not be apprised of how to achieve this with a reasonable expectation of success. For this reason, the Walsh reference is optionally applied in each of the above Rejections 1-3 as an optional teaching reference to teach the areal mass loading feature can be manipulated by the amount of starting material provided and/or compression. Accordingly, there is clearly a reasonable expectation of success in how to achieve a desired areal mass loading of an electrode material in the construct of a single dry electrode film in view of the teachings of Walsh on how to provide such for a dry electrode film such that the argument is moot.
It is additionally noted that the instant application has no special method techniques provided that are not already known by those having ordinary skill in the art. The method of fabricating the single dry electrode appears to only require combining the dry ingredients with one another (P9-10), and (perhaps) calendaring (P43). There is thus no special process step needed to achieve the areal loading feature in the instant application, wherein as demonstrated by Walsh, this feature is easily manipulated by way of the starting amount of material utilized and/or compression applied.
Accordingly, the “creation” of the single dry film electrode of claim 1 is not a new and unexpected result.
As to the arguments for new or unexpected results for the specific range(s) claimed, if this was a successful showing of new/unexpected results, then this would bring a forth a new matter issue because the ranges recited in the claim are not original ranges to the application for which support is alleged. To this end, and as only one non-limiting, example, the thickness range in the claim is 110-2,000 µm and is not an originally taught range. While the general range of 30 microns to 2,000 microns (P39 of the provisional) is taught and supports the range of 110-2,000 microns (or any other random end points Applicant wants to select and claim in this range), Applicant cannot then persuasively argue unexpected results regarding a new, narrower range than that which was originally claimed/taught because Applicant would be alleging that the newly claimed range is a different invention than the originally disclosed range since the newly claimed range has properties unique from the originally disclosed range. In other words, an amended range having new end points within an original range is not new matter by itself; however, a successful showing of unexpected results regarding a narrower range than was originally claimed/taught would bring forth a new matter issue, as it would show that the newly claimed range is a different invention than the originally disclosed range. See MPEP 2163(I)(B) and case law discussion below. Specifically, unexpected results establishes that a small range is a different invention than the broad range such that as In re Wertheim (citation below) points out, if the broad and narrow ranges are different inventions the broad range does not describe the narrow range. With respect to the above, the following case law is applicable to this position:
In re Wertheim, 541 F.2d 257 (1976). “Where it is clear, for instance, that the broad described range pertains to a different invention than the narrower (and subsumed) claimed range, then the broader range does not describe the narrower range. In re Baird, 348 F.2d 974, 52 CCPA 1747, 146 USPQ 579 (1965); In re Draeger, 150 F.2d 572, 32 CCPA 1217, 66 USPQ 247 (1945).
Accordingly, arguendo, even if unexpected results were established for the ranges presented, then the claims would be rejected under 35 U.S.C. 112(a)/first paragraph for this reason.
The argument for unexpected results was addressed in the Non-Final Rejection mailed 7/20/2023 (see pages 11-14), as well as the prior Office Action. Each of the primary references under 35 U.S.C. 103 teaches all of the claimed subject matter except the electrode material loading range recited. The electrode material loading range is met by the taught range of Zhamu, Zhamu teaching “preferably greater than 15 mg/cm2, and the optional teaching reference to Walsh teaches how to specifically achieve a dry electrode with this feature by way of the starting amount of material utilized and/or compression applied.
The Examiner has reviewed the evidence offered in the specification which states that a battery incorporating a dry electrode was better than one including a wet cathode and a wet anode (P102). The entire analysis and examples in the instant application PGPUB appear to revolve around the comparison of dry electrodes versus wet electrodes, not a specified range of any kind. The prior art applied against the claims all teach dry electrodes such that any alleged “better” results would naturally be present in the dry electrodes of these prior art references.
To rebut a prima facie case of obviousness by showing the criticality of the range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies."); In re Becket, 88 F.2d 684 (CCPA 1937). See MPEP 2144.04, Section III-A. See MPEP § 716.02 - § 716.02(g) for a discussion of criticality and unexpected results. Note that to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Furthermore with respect to any future allegation of unexpected results, the following is noted.
The "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." (MPEP 7160.02(d)) (Examiner emphasis).
The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
See also the following case law (MPEP 716.02(d)):
In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium);
In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.); and
In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.")
The objective evidence offered within the instant application examples is limited to specific species of materials (e.g., graphite or NMC622 versus the genus of “a dry active material” as one non-limiting example). In the case law of In re Grasselli cited above, the evidence of experiments limited to sodium were considered insufficient to rebut the prima facie case of obviousness because the claims were directed to catalysts containing an alkali metal (sodium being a species of the genus alkali metal of which there are only six alkali metals). Accordingly, there is no adequate basis for reasonably concluding that the great number and variety of compositions encompassed by the genera presented (e.g., “a dry active material,” “a dry binder,” etc.) would behave in the same manner as the tested composition, especially given the vast number of possible active materials given the electrode can be an electrode for a battery, capacitor, fuel cell, electrolysis cell, etc.
The evidence offered and cited by Applicant includes Example 1, wherein the electrode material loading involves two data points, does not span the ranges presented in claim 1, and does not include data outside the range. As noted above, unexpected results must be shown to occur over the entire claimed range, and furthermore, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Lastly, the objective evidence should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Accordingly, at the present time, there is no adequate basis to believe there is any unexpected result for the claimed construct as a whole or a specific range recited therein. The argument for unexpected results is not persuasive.
Applicant comments:
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In response: Double patenting is reviewed according to examination procedures set forth in MPEP 804; the Examiner has never seen a request for the Examiner to specifically carry out standard examination procedure with respect to double patenting review. If there are known applications or US Patents with double patenting issues known to those with a duty of disclosure, they should be made known to the Examiner, wherein it is noted that disclosure of copending US applications material to patentability lies with all individuals associated with the filing or prosecution of a patent application including (MPEP 2001):
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
See MPEP 2001.06(b) Information Relating to or From Copending United States Patent Applications
The individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications which are "material to patentability" of the application in question. This may include providing the identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application. As set forth by the court in Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70, 79 (7th Cir. 1972):
[W]e think that it is unfair to the busy examiner, no matter how diligent and well informed he may be, to assume that he retains details of every pending file in his mind when he is reviewing a particular application . . . [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
See also MPEP § 2004, paragraph 9.
Accordingly, the individuals covered by 37 CFR 1.56 cannot assume that the examiner of a particular application is necessarily aware of other applications which are "material to patentability" of the application in question, but must instead bring such other applications to the attention of the examiner. See Regeneron Pharm., Inc. v. Merus B.V., 144 F. Supp. 3d 530, 560 (S.D.N.Y. 2015), and Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003). For example, if a particular inventor has different applications pending which disclose similar subject matter but claim patentably indistinct inventions, the existence of other applications must be disclosed to the examiner of each of the involved applications. Similarly, the prior art references from one application must be made of record in another subsequent application if such prior art references are "material to patentability" of the subsequent application. See Dayco Prod., 329 F.3d at 1369, 66 USPQ2d at 1808.
The proper way to cite such copending applications and/or any other document “material to patentability” is by way of an IDS. At the present time, the Examiner is not aware of any double patenting rejections that should be made.
Additional Examiner Comments:
In a prior response, Applicant argued that because a given dependent claim was not rejected under a primary reference, the rejection was overcome. It is noted that all dependent claims may not be addressed for each and every main rejection of the multitude set forth against the claims. For example, all claims are addressed within the Rejection 1 rejection, whereas Rejection 2 does not address each dependent claim where an additional teaching reference is needed; however, that is not to say that the same prior art applied to a given dependent claim cannot be applied to the limitation if moved to the independent claim.
Applicant should practice compact prosecution with respect to the prior art cited and review it in the general scope of how it could be applied in conjunction with any primary reference cited in this Office Action, wherein the purpose of the multiple rejections is to demonstrate the body of prior art available against the claimed construct in order that Applicant can make appropriate amendments to avoid at least three known primary references. Moving a dependent claim properly rejected with prior art in at least one of the said rejections, and not viewing the teaching reference applied against it as a whole is respectfully, not a compact prosecution practice.
Conclusion
16. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached on (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BARROW/Primary Examiner, Art Unit 1729