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 .
Response to Amendment and Claim Status
The amendment filed 29 April 2026 has been entered. Applicant’s amendments to the drawings and specification have overcome each and every objection set forth in the Office Action mailed 9 February 2026. Claims 1–13, 15, and 28–36 have been canceled. Claims 37–45 have been added. Claims 14, 16–27, and 37–45 are pending in the application. Claims 24–27 are withdrawn from consideration.
Claim Objections
Claim 17 is objected to because of the following informality: “of the anode” in line 3 should be deleted to avoid issues of antecedent basis.
Claim 22 is objected to because of the following informality: “of the anode” in line 3 should be deleted to avoid issues of antecedent basis.
Claim 40 is objected to because of the following informality: “the battery” in line 1 should instead read “the lithium-ion battery” to avoid issues of antecedent basis.
Appropriate correction is required.
Claim Interpretation
Claims 14, 19, and 39–45 recite one or both of the terms “metallic lithium” and “lithium metal”. The broadest reasonable interpretation of both of these terms is considered to be: lithium in a +0 oxidation state. Because they are interpreted as having the same meaning, these terms are considered to be analogous.
Claims 40, 41, and 45 recite “a lithium metal anode battery”. The broadest reasonable interpretation of this term is considered to be: a battery wherein the anode comprises lithium metal.
Claim Rejections - 35 USC § 112
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.
Claims 20, 39, 44, and 45 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 20 recites the limitation “wherein sidewalls of said vertically aligned carbon nanotubes are essentially without openings”. The instant specification does not properly describe the subject matter of this limitation. While Applicant states that support for these limitations comes from [0023], [0027], and FIG. 3 of the instant specification, neither [0023] nor [0027] appear to explicitly or implicitly refer to the state of the sidewalls of the vertically aligned carbon nanotubes, and FIG. 3 is a basic schematic that does not show the sidewalls in detail; such disclosures are not sufficient to indicate that the “sidewalls of said vertically aligned carbon nanotubes are essentially without openings” as claimed.
Claim 20 further recites the limitation “interiors of said vertically aligned carbon nanotubes are filled to about a same level with the lithium”. The instant specification does not properly describe the subject matter of this limitation. While the instant specification discloses in e.g. [0029] that “The CNTs are filled with Li metal. The filling behavior of the CNTs with Li metal is governed by the density, height, and diameter of the CNTs in the forest”, such a disclosure is not sufficient to indicate that all of the carbon nanotubes are filled “to about a same level” as claimed.
Claims 39, 44, and 45 are rejected under 25 U.S.C. § 112(a) as they depend upon Claim 20.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20, 39, 44, and 45 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “essentially” in Claim 20 is a relative term which renders the claim indefinite. The term “essentially” is not defined by the claim, the instant specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “about” in Claim 20 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the instant specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 39, 44, and 45 are rejected under 35 U.S.C. § 112(b) as they depend upon Claim 20 and do not resolve the indefinite language described above.
Claim 39 is further rejected under 35 U.S.C. § 112(b) as it recites the limitation “wherein interiors of said vertically aligned carbon nanotubes are filled with metallic lithium”, but it is unclear whether the recited “metallic lithium” is meant to further limit the “lithium” recited in Claim 20 (upon which Claim 39 depends) or if “metallic lithium” is meant to be present in the interiors of said vertically aligned carbon nanotubes in addition to the lithium already recited in Claim 20. For the purposes of this office action, the first interpretation is used, i.e. this limitation is interpreted as “wherein the lithium is metallic lithium.”
Claim 44 is further rejected under 35 U.S.C. § 112(b) as it recites the limitation “the lithium in the current collector of the anode”. There is insufficient antecedent basis for this limitation in the claim, because no lithium in the current collector has been previously recited; in other words, Claim 20 (upon which Claim 44 depends) recites lithium in interiors of said vertically aligned carbon nanotubes which are grown directly on the current collector, but does not recite lithium in the current collector itself. For the purposes of this office action, Claim 44 in its entirety is interpreted as “The anode for a lithium-ion battery of claim 20 wherein the lithium is metallic lithium”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 40, 42, and 43 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 40, because Claim 14 (upon which Claim 40 depends) requires that the interiors of vertically aligned carbon nanotubes grown directly on the anode are filled with metallic lithium, i.e. lithium metal (as set forth in the Claim Interpretation section of the office action above, “metallic lithium” and “lithium metal” are considered to be analogous terms which have the same meaning, i.e. refer to lithium in a +0 oxidation state), it can be understood that the anode of the lithium-ion battery of Claim 14 must comprise lithium metal, and therefore that the lithium-ion battery of Claim 14 is necessarily a lithium metal anode battery. As such, the limitation of Claim 40 “wherein the lithium-ion battery is a lithium metal anode battery” is not considered to be further limiting.
Regarding Claims 42 and 43, as set forth in the Claim Interpretation section of the office action above, “metallic lithium” and “lithium metal” are considered to be analogous terms which have the same meaning, i.e. refer to lithium in a +0 oxidation state. Thus, the limitations of Claims 42 and 43 “wherein the metallic lithium is lithium metal” are not considered to be further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 14, 16, 19, 21, and 40–43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (US 2011/0104551 A1).
Regarding Claim 14, Yang discloses a lithium-ion battery (see electrochemical cell, [0012]; see also Li-ion battery, [0022]), comprising:
a cathode (see cathode, [0012]),
an anode (see anode, [0012]; see also Si-ACNT composite anode, [0029], FIG. 1), and
a forest of vertically aligned carbon nanotubes (see aligned nanotubular base material, [0023]; note [0025]–[0026] disclose the aligned nanotubular base material can comprise carbon nanotubes; note [0027] and FIG. 1 disclose the carbon nanotubes are aligned vertically, i.e. perpendicular to the substrate material of the anode) on said anode ([0029], [0035], FIG. 1),
wherein interiors of said vertically aligned carbon nanotubes are filled with metallic lithium ([0024], [0030], and FIG. 2–3, disclose the lithium-alloying material can be present on the interior wall surfaces of the vertically aligned carbon nanotubes; [0024]–[0025] disclose that the vertically aligned carbon nanotubes are open-ended; [0026] and [0029] disclose that the lithium-alloying material (e.g. Si) forms an alloy with lithium; it can therefore be understood that Yang discloses wherein, during cycling, interiors of said vertically aligned carbon nanotubes are filled with metallic lithium in the form of an alloy).
Yang further discloses wherein the forest of vertically aligned carbon nanotubes are grown directly on said anode ([0029], [0035]). However, it is noted that these limitations are considered to be product-by-process limitations, and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 227 USPQ 964,966).
Regarding Claim 16, Yang discloses the anode for a lithium-ion battery as set forth above. Yang further discloses wherein the anode is a copper foil anode (see Cu foil, [0035]).
Regarding Claim 19, Yang discloses an anode (see anode, [0012]; see also Si-ACNT composite anode, [0029], FIG. 1) for a lithium-ion battery (see electrochemical cell, [0012]; see also Li-ion battery, [0022]), comprising:
a current collector (see metallic current collector substrate, [0029]; see also current collector, [0029], [0034], [0035]), and
a forest of vertically aligned carbon nanotubes (see aligned nanotubular base material, [0023]; note [0025]–[0026] disclose the aligned nanotubular base material can comprise carbon nanotubes; note [0027] and FIG. 1 disclose the carbon nanotubes are aligned vertically, i.e. perpendicular to the current collector) on said current collector ([0029], [0035], FIG. 1),
wherein interiors of said vertically aligned carbon nanotubes are filled with metallic lithium ([0024], [0030], and FIG. 2–3, disclose the lithium-alloying material can be present on the interior wall surfaces of the vertically aligned carbon nanotubes; [0024]–[0025] disclose that the vertically aligned carbon nanotubes are open-ended; [0026] and [0029] disclose that the lithium-alloying material (e.g. Si) forms an alloy with lithium; it can therefore be understood that Yang discloses wherein, during cycling, interiors of said vertically aligned carbon nanotubes are filled with metallic lithium in the form of an alloy).
Yang further discloses wherein the forest of vertically aligned carbon nanotubes are grown directly on said current collector ([0029], [0035]). However, it is noted that these limitations are considered to be product-by-process limitations, and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 227 USPQ 964,966).
Regarding Claim 21, Yang discloses the anode as set forth above. Yang further discloses wherein said current collector is a copper foil current collector (see Cu foil, [0035]).
Regarding Claim 40, Yang discloses the lithium-ion battery as set forth above. Yang further discloses wherein the lithium-ion battery is a lithium metal anode battery (as set forth in the rejection of Claim 14 above, Yang discloses wherein, during cycling, interiors of said vertically aligned carbon nanotubes are filled with metallic lithium, i.e. lithium metal, in the form of an alloy; thus, it can be understood that Yang discloses wherein the anode of the lithium-ion battery comprises lithium metal, and thus that the lithium-ion battery is necessarily a lithium metal anode battery; note that as set forth in the Claim Interpretation section of the office action above, the broadest reasonable interpretation of “lithium metal anode battery” is considered to be: a battery wherein the anode comprises lithium metal).
Regarding Claim 41, Yang discloses the anode for a lithium-ion battery as set forth above. Yang further discloses a lithium metal anode battery (see electrochemical cell, [0012]; see also Li-ion battery, [0022]) comprising the anode of Claim 19 (note that as set forth in the rejection of Claim 19 above, Yang discloses wherein, during cycling, interiors of said vertically aligned carbon nanotubes comprised in the anode are filled with metallic lithium, i.e. lithium metal, in the form of an alloy; thus, it can be understood that Yang discloses wherein the anode comprises lithium metal; as such, the battery disclosed by Yang as set forth above which comprises this anode is necessarily a lithium metal anode battery; note that as set forth in the Claim Interpretation section of the office action above, the broadest reasonable interpretation of “lithium metal anode battery” is considered to be: a battery wherein the anode comprises lithium metal).
Regarding Claim 42, Yang discloses the lithium-ion battery as set forth above. Yang further discloses wherein the metallic lithium is lithium metal (as set forth in the Claim Interpretation section of the office action above, “metallic lithium” and “lithium metal” are considered to be analogous terms which have the same meaning, i.e. refer to lithium in a +0 oxidation state).
Regarding Claim 43, Yang discloses the anode for a lithium-ion battery as set forth above. Yang further discloses wherein the metallic lithium is lithium metal (as set forth in the Claim Interpretation section of the office action above, “metallic lithium” and “lithium metal” are considered to be analogous terms which have the same meaning, i.e. refer to lithium in a +0 oxidation state).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
Claims 17 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2011/0104551 A1) as applied to Claims 14, 16, 19, 21, and 40–43 above, in view of Hiraoka et al. (“Synthesis of Single- and Double-Walled Carbon Nanotube Forests on Conducting Metal Foils”; art already of record) and as evidenced by Hiraoka Supplementary Information Document (Supplementary Information for “Synthesis of Single- and Double-Walled Carbon Nanotube Forests on Conducting Metal Foils”; art already of record).
Regarding Claim 17, Yang discloses the lithium-ion battery as set forth above, but does not explicitly disclose wherein the anode is a metal alloy anode comprising Ni, Cr and Fe, wherein the Ni, Cr and Fe are present in the highest amounts in the metal alloy relative to other components of the metal alloy. However, Yang does disclose ([0028]) wherein the substrate material of the anode is for example a conductive metal foil, and ([0035]) that the forest of vertically aligned carbon nanotubes can be grown via chemical vapor deposition.
Hiraoka teaches (p. 13338 ¶ “Here, we report…” and ¶ “Importantly, we did find…”) a forest of vertically aligned carbon nanotubes grown directly on Inconel 601. Inconel 601 is a metal alloy comprising Ni, Cr, and Fe, wherein the Ni, Cr, and Fe are present in the highest amounts (61%, 23%, and 16%, respectively) in the metal alloy relative to the other components of the metal alloy, as evidenced by Hiraoka Supplementary Information Document (Table S1). Hiraoka teaches (p. 13338 ¶ “Importantly, we did find…”) that Ni-based alloys with Cr or Fe such as Inconel 601 possess high durability towards chemical vapor deposition, and that carbon nanotube forests grown thereon are dense, catalyst-free, vertically aligned, and growable to millimeter-scale heights.
Yang and Hiraoka are analogous to the claimed invention as they are in the same field of carbon nanotubes. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the lithium-ion battery of Yang such that the anode is a metal alloy anode such as Inconel 601 comprising Ni, Cr, and Fe, wherein the Ni, Cr, and Fe are present in the highest amounts in the metal alloy relative to other components of the metal alloy, for the purpose of ensuring that the anode possesses high durability towards chemical vapor deposition, and that carbon nanotube forests grown thereon are dense, catalyst-free, vertically aligned, and growable to millimeter-scale heights.
Regarding Claim 22, Yang discloses the anode for a lithium-ion battery as set forth above, but does not explicitly disclose wherein said current collector is a metal alloy current collector comprising Ni, Cr and Fe, wherein the Ni, Cr and Fe are present in the highest amounts in the metal alloy relative to other components of the metal alloy. However, Yang does disclose ([0028]) wherein the substrate material, i.e. current collector, is for example a conductive metal foil, and ([0035]) that the forest of vertically aligned carbon nanotubes can be grown via chemical vapor deposition.
Hiraoka teaches (p. 13338 ¶ “Here, we report…” and ¶ “Importantly, we did find…”) a forest of vertically aligned carbon nanotubes grown directly on Inconel 601. Inconel 601 is a metal alloy comprising Ni, Cr, and Fe, wherein the Ni, Cr, and Fe are present in the highest amounts (61%, 23%, and 16%, respectively) in the metal alloy relative to the other components of the metal alloy, as evidenced by Hiraoka Supplementary Information Document (Table S1). Hiraoka teaches (p. 13338 ¶ “Importantly, we did find…”) that Ni-based alloys with Cr or Fe such as Inconel 601 possess high durability towards chemical vapor deposition, and that carbon nanotube forests grown thereon are dense, catalyst-free, vertically aligned, and growable to millimeter-scale heights.
Yang and Hiraoka are analogous to the claimed invention as they are in the same field of carbon nanotubes. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the anode of Yang such that the current collector is a metal alloy current collector such as Inconel 601 comprising Ni, Cr, and Fe, wherein the Ni, Cr, and Fe are present in the highest amounts in the metal alloy relative to other components of the metal alloy, for the purpose of ensuring that the current collector possesses high durability towards chemical vapor deposition, and that carbon nanotube forests grown thereon are dense, catalyst-free, vertically aligned, and growable to millimeter-scale heights.
Claims 18 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2011/0104551 A1) as applied to Claims 14, 16, 19, 21, and 40–43 above, in view of Tour et al. (US 2018/0358618 A1; art already of record).
Regarding Claim 18, Yang discloses the lithium-ion battery as set forth above, but does not disclose wherein the anode is a graphene anode.
Tour teaches a lithium-ion battery (see battery 50, [0034], [0081]) comprising: a cathode (see cathode 52, [0034]), an anode (see anode 56, [0034]), and a forest of vertically aligned carbon nanotubes grown directly on said anode ([0033]; note that [0034] teaches that the electrode can be an anode; note that [0040] teaches that the vertically aligned carbon nanotubes can be in the form of a forest). Tour further teaches wherein the anode is a graphene anode ([0044] teaches that the substrate 40 of the electrodes can include a graphene film 38). Tour teaches ([0104]) that seamless growth of carbon nanotubes on graphene, wherein the graphene is in intimate contact with copper, eliminates electrode-current collector resistance.
Yang and Tour are analogous to the claimed invention as they are in the same field of lithium-ion batteries. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the lithium-ion battery of Yang such that the anode is a graphene anode, as taught by Tour, for the purpose of eliminating electrode-current collector resistance due to seamless growth of carbon nanotubes on graphene in intimate contact with copper.
Regarding Claim 23, Yang discloses the lithium-ion battery as set forth above, but does not disclose wherein said current collector is a graphene current collector.
Tour teaches an anode (see anode 56, [0034]) for a lithium-ion battery (see battery 50, [0034], [0081]), comprising: a current collector (see substrate 40, [0033], [0044]), and a forest of vertically aligned carbon nanotubes grown directly on said current collector ([0033]; note that [0034] teaches that the electrode can be an anode; note that [0040] teaches that the vertically aligned carbon nanotubes can be in the form of a forest), wherein said current collector is a graphene current collector ([0044] teaches that the substrate 40 can include a graphene film). Tour teaches ([0104]) that seamless growth of carbon nanotubes on graphene, wherein the graphene is in intimate contact with copper, eliminates electrode-current collector resistance.
Yang and Tour are analogous to the claimed invention as they are in the same field of anodes for lithium-ion batteries. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the anode of Yang such that the current collector is a graphene current collector, as taught by Tour, for the purpose of eliminating electrode-current collector resistance due to seamless growth of carbon nanotubes on graphene in intimate contact with copper.
Claims 20, 37–39, 44, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2011/0104551 A1) as evidenced by Mielke et al. (“The role of vacancy defects and holes in the fracture of carbon nanotubes”; art already of record).
Regarding Claim 20, Yang discloses an anode (see anode, [0012]; see also Si-ACNT composite anode, [0029], FIG. 1) for a lithium-ion battery (see electrochemical cell, [0012]; see also Li-ion battery, [0022]), comprising:
a current collector (see metallic current collector substrate, [0029]; see also current collector, [0029], [0034], [0035]), and
a forest of vertically aligned carbon nanotubes (see aligned nanotubular base material, [0023]; note [0025]–[0026] disclose the aligned nanotubular base material can comprise carbon nanotubes; note [0027] and FIG. 1 disclose the carbon nanotubes are aligned vertically, i.e. perpendicular to the current collector) on said current collector ([0029], [0035], FIG. 1),
wherein interiors of said vertically aligned carbon nanotubes are filled with lithium ([0024], [0030], and FIG. 2–3, disclose the lithium-alloying material can be present on the interior wall surfaces of the vertically aligned carbon nanotubes; [0024]–[0025] disclose that the vertically aligned carbon nanotubes are open-ended; [0026] and [0029] disclose that the lithium-alloying material (e.g. Si) forms an alloy with lithium; it can therefore be understood that Yang discloses wherein, during cycling, interiors of said vertically aligned carbon nanotubes are filled with lithium in the form of an alloy).
Yang further discloses wherein the forest of vertically aligned carbon nanotubes are grown directly on said current collector ([0029], [0035]). However, it is noted that these limitations are considered to be product-by-process limitations, and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 227 USPQ 964,966).
Yang does not explicitly disclose wherein sidewalls of said vertically aligned carbon nanotubes are essentially without openings.
Mielke evidences (p. 419 ¶ “We have explored…”) that openings in the sidewalls of carbon nanotubes substantially reduce the failure stresses and failure strains of carbon nanotubes, reducing their strength.
Mielke and Yang are analogous to the claimed invention as they are in the same field of carbon nanotubes. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the anode of Yang such that the sidewalls of said vertically aligned carbon nanotubes are essentially without openings for the purpose of ensuring their strength and avoiding substantial reductions in failure stresses and failure strains caused by openings in the sidewalls, as evidenced by Mielke.
Regarding Claim 37, Yang discloses the lithium-ion battery as set forth above, but does not explicitly disclose wherein sidewalls of said vertically aligned carbon nanotubes are essentially without openings along longitudinal of said sidewalls between distal ends of said vertically aligned carbon nanotubes.
Mielke evidences (p. 419 ¶ “We have explored…”) that openings in the sidewalls of carbon nanotubes substantially reduce the failure stresses and failure strains of carbon nanotubes, reducing their strength.
Mielke and Yang are analogous to the claimed invention as they are in the same field of carbon nanotubes. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the lithium-ion battery of Yang such that the sidewalls of said vertically aligned carbon nanotubes are essentially without openings along longitudinal of said sidewalls between distal ends of said vertically aligned carbon nanotubes for the purpose of ensuring their strength and avoiding substantial reductions in failure stresses and failure strains caused by openings in the sidewalls, as evidenced by Mielke.
Regarding Claim 38, Yang discloses the anode for a lithium-ion battery as set forth above, but does not explicitly disclose wherein sidewalls of said vertically aligned carbon nanotubes are essentially without openings.
Mielke evidences (p. 419 ¶ “We have explored…”) that openings in the sidewalls of carbon nanotubes substantially reduce the failure stresses and failure strains of carbon nanotubes, reducing their strength.
Mielke and Yang are analogous to the claimed invention as they are in the same field of carbon nanotubes. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the anode of Yang such that the sidewalls of said vertically aligned carbon nanotubes are essentially without openings for the purpose of ensuring their strength and avoiding substantial reductions in failure stresses and failure strains caused by openings in the sidewalls, as evidenced by Mielke.
Regarding Claims 39 and 44, modified Yang discloses the anode for a lithium-ion battery as set forth above. Yang further discloses wherein the lithium is metallic lithium (as set forth in the rejection of Claim 20 above, it can be understood that Yang discloses wherein, during cycling, interiors of said vertically aligned carbon nanotubes are filled with lithium in the form of an alloy; one of ordinary skill in the art will understand that lithium in the form of an alloy is necessarily metallic lithium).
Regarding Claim 45, modified Yang discloses the anode for a lithium-ion battery as set forth above. Yang further discloses a lithium metal anode battery (see electrochemical cell, [0012]; see also Li-ion battery, [0022]) comprising the anode of Claim 20 (as set forth in the rejection of Claim 20 above, it can be understood that Yang discloses wherein, during cycling, interiors of said vertically aligned carbon nanotubes comprised in the anode are filled with lithium in the form of an alloy; one of ordinary skill in the art will understand that lithium in the form of an alloy is necessarily metallic lithium, i.e. lithium metal; as such, it can be understood that Yang discloses wherein the anode comprises lithium metal, and thus that the battery disclosed by Yang as set forth above which comprises this anode is necessarily a lithium metal anode battery; note that as set forth in the Claim Interpretation section of the office action above, the broadest reasonable interpretation of “lithium metal anode battery” is considered to be: a battery wherein the anode comprises lithium metal).
***
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Unalan et al. (US 2010/0178568 A1; art already of record) in view of Lu (US 2009/0246625 A1; art already of record), as evidenced by Shimoda et al. (“Lithium intercalation into etched single-wall carbon nanotubes”; art already of record), and as further evidenced by Mielke et al. (“The role of vacancy defects and holes in the fracture of carbon nanotubes”; art already of record).
Regarding Claim 19, Unalan discloses an anode (see anode 210, [0045], FIG. 4) for a lithium-ion battery (see lithium ion battery 200, [0045], FIG. 4), comprising:
a current collector (see metal foil substrate 214, [0045], FIG. 4), and
a forest of vertically aligned carbon nanotubes (see CNT layer 212, [0045], FIG. 4; see also densely packed, vertically aligned carbon nanotubes, [0033], FIG. 1, which one of ordinary skill in the art will understand constitutes a forest of vertically aligned carbon nanotubes) grown directly on said current collector (214) ([0045], FIG. 1 and 4).
Unalan does not explicitly disclose wherein interiors of said vertically aligned carbon nanotubes are filled with lithium.
Lu teaches an anode (see anode 106, [0122], FIG. 1) for a lithium-ion battery (see electrochemical battery 100, [0122], FIG. 1, identified in [0228] as a lithium-ion battery), comprising: a current collector (see second current collector 104, [0122], FIG. 1), and a forest of vertically aligned carbon nanotubes (see graphene nanoribbons 134, [0230], FIG. 15, which can be carbon nanotubes (CNT) 118, [0230], FIG. 15, and which can be aligned, i.e. vertically aligned, [0243], FIG. 15) grown directly on said current collector ([0242]). Lu further teaches that having open ends on carbon nanotubes doubles their electrolyte-accessible surface area ([0244]). Furthermore, it is well-known in the field of carbon nanotubes that lithium diffuses into, i.e. fills the interiors of, carbon nanotubes via their open ends, as evidenced by Shimoda (p. 134 ¶ “The factor of…”).
Unalan and Lu are analogous to the claimed invention as they are in the same field of lithium-ion batteries. It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the anode of Unalan such that the vertically aligned carbon nanotubes have open ends, as taught by Lu, for the purpose of doubling their electrolyte-accessible surface area. As evidenced by Shimoda, due to their open ends, the interiors of the vertically aligned carbon nanotubes of modified Unalan will be filled with lithium.
Unalan does not explicitly disclose wherein sidewalls of said vertically aligned carbon nanotubes are essentially without openings.
However, it is well-known in the field of carbon nanotubes that openings in the sidewalls substantially reduce the failure stresses and failure strains of carbon nanotubes, reducing their strength, as evidenced by Mielke (p. 419 ¶ “We have explored…”). It would therefore have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the anode of modified Unalan such that the sidewalls of said vertically aligned carbon nanotubes are essentially without openings, in order to ensure their strength and avoid substantial reductions in failure stresses and failure strains which, as evidenced by Mielke, are caused by openings in the sidewalls.
Response to Arguments
Applicant’s arguments on p. 11–13 of the Remarks filed 29 April 2026 with regards to the 35 U.S.C. 112(a) rejection of Claim 20 in the previous office action mailed 9 February 2026 have been fully considered but are not persuasive for the following reasons:
Applicant argues on p. 11 that “The present application discloses embodiments in which the CNTs exhibit invariant structural properties, so that they can be all the same size with “invariant” structural feature such as sidewalls without variations (openings). See 0037.”
This argument is not persuasive. The instant specification ([0037]) mentions “invariant CNT structural properties” but does not appear to specifically reference the sidewalls of the carbon nanotubes or any openings they may or may not have; thus such a disclosure is not sufficient to indicate that the “sidewalls of said vertically aligned carbon nanotubes are essentially without openings, wherein interiors of said vertically aligned carbon nanotubes are filled to about a same level with the lithium” as claimed.
Applicant argues on p. 11–12 that “the present application specifically discloses approaches wherein the CNTs are filled via capillary filling, which is well known as liquid being drawn into an opening in the end of the CNT (vs. through holes in the sidewalls). See 0023 and Fig. 3, showing a partially-filled CNT.”
This argument is not persuasive. While the instant specification ([0023]) describes “capillary filling”, neither [0023], FIG. 3, nor any other part of the instant specification appears to establish any connection between holes in carbon nanotube sidewalls and capillary filling, or what effect capillary filling would have on the filling behavior of the carbon nanotubes in general, such that a person of ordinary skill in the art would reasonably conclude from the application as filed that the “sidewalls of said vertically aligned carbon nanotubes are essentially without openings, wherein interiors of said vertically aligned carbon nanotubes are filled to about a same level with the lithium” as claimed.
Applicant argues on p. 12 that “the pertinent rules set forth in MPEP 2163 require consideration of the specification as well as the drawings. Fig. 3 of the application as filed shows CNTs filled to about the same level with lithium”. Applicant argues that Fig. 3 “clearly shows CNTs filled to about the same level.”
This argument is not persuasive. FIG. 3 is a basic schematic that does not appear to show the presence of lithium in general or any details of lithium filling level in the carbon nanotubes. It is also noted that the instant specification does not appear to disclose that lithium is being illustrated in FIG. 3.
Applicant argues on p. 13 that “the present application includes embodiments where the CNTs exhibit nearly invariant structural properties, so that all CNTs are essentially the same size. See 0037 of the present application. Moreover, the application discloses filling the CNTs via chemical vapor deposition (CVD), which is well known as producing uniform growth on all surfaces, at the atomic-level. See Id., original claim 10. Similarly, capillary filling is disclosed at 0023, which is well known as liquid being drawn into an opening in the end of the CNT (vs. through holes in the sidewalls). See 0023 and Fig. 3, showing partially-filled CNTs. Moreover, 0023 discloses electrochemical methods of filling. Any of these methods would be expected to product about the same fill level, and could be used to completely fill the CNTs with lithium. Completely full CNTs would be considered filled to about the same level (e.g., filled to the top). Accordingly, the application adequately discloses processes that result in the CNTs being filled to about the same level, and consequently, adequately teaches the resulting filled CNTs, whether they be partially filled or fully filled.”
This argument is not persuasive. It is noted that [0037] does mention “invariant CNT structural properties” but does not specifically mention that all the CNTs are essentially the same size. It is also noted that while original claim 10 does disclose a step of filling carbon nanotubes with lithium using chemical vapor deposition, Applicant’s argument that chemical vapor deposition is well known to produce uniform growth at all surfaces on the atomic level is a conclusory statement without any supporting evidence (see MPEP § 716.01(c)). It is also noted that while [0023] does disclose capillary filling, the instant specification, as set forth above, does not appear to disclose what effect capillary filling would have on the filling behavior of lithium in the carbon nanotubes. This is considered to also be the case for the “electrochemical methods of filling” disclosed in [0023]. Finally, it is also noted that Applicant’s statement that any of the above methods would be considered to fill to about the same level is also a conclusory statement without any supporting evidence (see MPEP § 716.01(c)). It is submitted that none of the above, even taken together, is sufficient to indicate that the instant specification discloses that “sidewalls of said vertically aligned carbon nanotubes are essentially without openings, wherein interiors of said vertically aligned carbon nanotubes are filled to about a same level with the lithium”, i.e. the instant specification does not properly describe the subject matter of these limitations.
Regarding Applicant’s argument on p. 15 of Remarks that filed 29 April 2026 regarding the finality of the present office action, it is noted that the rejection of Claim 20 under 35 U.S.C. 103 as being unpatentable over Unalan in view of Lu, as evidenced by Shimoda, and as further evidenced by Mielke, as set forth above, does not introduce new grounds or newly cited art.
Applicant’s arguments on p. 15–20 of Remarks regarding the 35 U.S.C. 103 rejections of Claims 14–19 and 21–23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (note that newly amended Claim 20 does not specify that the lithium is “metallic lithium” or “lithium metal”, and therefore the arguments on p. 15–20 which pertain to Unalan and Lu being directed to lithium ions are not applicable to the 35 U.S.C. 103 rejection of Claim 20 as being unpatentable over Unalan, Lu, Shimoda, and Mielke).
Conclusion
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.
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/J.M.F./Examiner, Art Unit 1725
/BASIA A RIDLEY/ Supervisory Patent Examiner, Art Unit 1725
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