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 .
Status of Claims
Claims 1, 3-4, and 6-12 are currently pending
Claims 1 and 10 are amended
Claim 5 has been cancelled
Status of Amendments
The amendment filed 21 November 2025 has been fully considered, but does not place the application in condition for allowance.
This action has been made final.
Status of Objections and Rejections of the Office Action from 22 August 2025
The 103 rejections over Suzuki in view of Kohiki are maintained in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 3-4, and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (US 20060088723 A1), hereinafter Suzuki, in view of Kohiki et al. (KR 20140023235 A), hereinafter Kohiki.
Regarding claims 1, 4, and 10, Suzuki teaches a surface-treated copper foil [0022] comprising needle-shaped copper particles formed on at least one surface thereof, in this case roughening particles of copper [0025], wherein the copper particles have an average major-axis length of about 0.6 µm to about 2.0 µm, in this case a height of 0.3 to 3.0 µm [0026], and are separated from one another by a distance of about 1 µm to about 5 µm, in this case less than 15 µm [0054]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Suzuki does not specify a width or aspect ratio of the roughening particle projections. However, Suzuki teaches that preferably 10 to 100 projections exist in a 25 µm length [0055]. This means each projection takes up 0.25 to 2.5 µm between the width and the separation distance. Any number of projections between about 4 and about 23 could also have the claimed height, distance between particles, and aspect ratio. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). For example, a foil with 4 projections in a 25 µm span each with a height of 2 µm could have a distance between particles of 4.92 µm and a width of 1.333 µm, leading to an aspect ratio of 1.5. On the other hand, a foil with 23 projections in a 25 µm span each with a height of 0.6 µm could have a distance between particles of 1.02 µm and a width of 0.06 µm, leading to an aspect ratio of 10.
Suzuki is also silent as to the copper foil being used as a negative electrode current collector. However, Kohiki teaches a roughened electrolytic copper foil as a negative electrode current collector (pg. 1, ¶ 2). Suzuki and Kohiki are both considered to be equivalent to the claimed invention because they are in the same field of surface-treated copper foils. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to use the copper foil of Suzuki as a negative electrode current collector, as taught by Kohiki. The selection of a known material, in this case roughened copper foil, based on its suitability for its intended use, in this case as a negative electrode current collector, has supported a prima facie obviousness determination. In re Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Suzuki is further silent as to the surface-treated copper foil having an interfacial resistance of about 10% or more lower than that of untreated copper foil, as required by claim 4, and is silent as to the surface-treated copper foil having an interfacial resistance of about 0.0025 ohm/m2 to about 0.0032 ohm/m2, as required by claims 1 and 10. However, the copper foil of Suzuki is produced by a substantially identical process to the claimed process of claim 10.
Suzuki teaches the copper foil being plated in two baths [0076] where the first bath [0075 Electroplating B Bath 1] is 1 to 50 g/L copper sulfate, which overlaps with the claimed 5 to 20 g/L, 3 to 25 g/L nickel sulfate, which overlaps with the claimed 5 to 15 g/L, at a temperature of 20 to 60 °C, which overlaps with the claimed 25 to 45 °C, for 5 to 60 seconds, which overlaps with the claimed 1 to 5 seconds, and the second bath is [0075 Electroplating B Bath 2] is 10 to 70 g/L copper sulfate, which overlaps with the claimed 40 to 70 g/L, 30 to 120 g/L sulfuric acid, which overlaps with the claimed 100 to 150 g/L, at a current density of 20 to 50 A/dm2, which overlaps with the claimed 10 to 20 A/dm2, a temperature of 20 to 65 °C, which overlaps with the claimed 25 to 45 °C, for 5 to 60 seconds, which overlaps with the claimed 1 to 5 seconds. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Suzuki is silent as to the current density of the first plating bath being 1 to 5 A/dm2. However, "[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). Therefore, it would have been obvious for one of ordinary skill in the art to optimize the current density to obtain uniformly distributed projections [0061].
One of ordinary skill in the art would expect the copper foil of Suzuki to have the claimed interfacial resistance change of claim 4 and the claimed interfacial resistance of claim 1 because the copper foil of Suzuki is produced by a substantially identical method. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 3, modified Suzuki teaches the surface-treated copper foil according to claim 1, wherein the surface-treated copper foil has a thickness of about 1 µm to about 200 µm [0039] and Original Foil 1 has a thickness of 12 µm [0070]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, "if the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Regarding claims 6 and 7, modified Suzuki teaches the surface-treated copper foil according to claim 1. Suzuki is silent as to the surface-treated copper foil having an adhesive strength of about 20% or more greater than the untreated copper foil and is silent as to the surface-treated copper foil having an adhesive strength of about 3 gf/mm to about 5 gf/mm. However, it would have been obvious to one of ordinary skill in the art to optimize the adhesive strength through variation of the surface roughness [0016]. "[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).
Regarding claims 8 and 9, modified Suzuki teaches the surface-treated copper foil according to claim 1. Suzuki is silent as to an anti-rust layer covering the copper particles. However, Kohiki teaches an electrodeposited copper foil further comprising a rustproof treatment layer using chromium oxide (pg. 5, ¶ 2) and/or a silane coupling layer (pg. 5, ¶ 4).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the copper foil of Suzuki to include the rust-proof layer of Kohiki. Doing so would have improved the heat resistance and corrosion resistance of the surface-treated copper foil (pg. 5, ¶ 4).
Regarding claims 11 and 12, modified Suzuki teaches the surface-treated copper foil according to claim 1 being used as a negative electrode current collector. Suzuki is silent as to an active material being coated on the surface-treated copper foil. However, Kohiki teaches a negative electrode (pg. 5, ¶ 7) comprising flaky graphite powder, which is considered to be equivalent to the carbon required by claim 12, being used as a negative electrode active material in a negative electrode paste that then gets applied to the surface of the copper foil (pg. 10, ¶ 3).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to use the metal foil of Suzuki in the negative electrode taught by Kohiki with the flaky graphite powder negative electrode active material. Doing so would have produced a negative electrode with high strength and improved flexibility (pg. 3, ¶ 5).
Response to Arguments
The Declaration under 37 CFR 1.132 filed 21 November 2025 is insufficient to overcome the rejection of claims 1 and 10 based upon Suzuki as set forth in the last Office action because the declaration fails to establish the presence of unexpected results in a relationship between the optimizable current density and the claimed interfacial resistance. Instead, the declaration attempts to target whether or not the particles of Suzuki could be considered to be needle-shaped by directing attention to an image of the surface of an additional example prepared under the claimed conditions with the primary plating current density altered up to 10 A/dm2 followed by a stated opinion that, based on the SEM image, the resultant surface does not have the needle-shaped morphology, specific particle distance characteristics, or interfacial resistance of the claimed embodiments. Without the inclusion of further data showing the interfacial resistance of the additional example and how it interacts with the changing current density, there is no proof that the process of Suzuki, and the subsequent product of the additional example, would not produce the claimed interfacial resistance.
Examiner further notes that whether or not a particle is considered to be “needle-shaped” is determined by the limitation of the aspect ratio being about 1.5 to about 10, as claimed in claim 1. Suzuki teaches the particles having a height of 0.3 to 3.0 µm [0026] and preferably 10 to 100 projections existing in a 25 µm length [0055] with any number of projections between about 4 and about 23 being able to have the claimed height, distance between particles, and aspect ratio, as shown above regarding claim 1. This is considered to overlap with the claimed aspect ratio. Therefore, the copper particles of Suzuki, based on the current limitations, are considered to be needle-shaped.
Applicant's arguments filed 21 November 2025 have been fully considered but they are not persuasive.
Applicant argues that Suzuki does not disclose the particles on the surface of the copper foil as being needle-shaped, nor does it provide any teaching regarding their aspect ratio. Examiner agrees that Suzuki does not use the term “needle-shaped” and does not define a specific value for the aspect ratio. However, Examiner respectfully notes that Suzuki teaches the height and number of projections in a specified distance which can be used to calculate the prospective aspect ratio of the particles, as shown above regarding claim 1. This calculated aspect ratio lies within the claimed range. Therefore, the particles of Suzuki are considered to be needle-shaped.
Applicant points out that Suzuki teaches peel strength deteriorating when the number of projections is small, citing [0050], and argues that one of ordinary skill would prefer a denser distribution, directing attention to the number of projections in the examples and the comparative examples. Examiner respectfully points out that the rest of that citation then teaches the effect also being diminished when the number of projections is too large with 10-100 projections as being the preferred number of projections in a 25 µm length, indicating that 1-9 projections would be considered a small number of projections regardless of how many projections are present in the examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
In response to applicant's argument that Suzuki teaches a broad copper salt concentration range with no suggestion that this parameter affects particle shape, interfacial resistance, or adhesive strength, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that Suzuki’s plating conditions are designed to suppress surface roughness and would discourage the formation of needle-shaped particles. Examiner agrees that Suzuki teaches a desire for reduced surface roughness, but respectfully disagrees that needle-shaped particles are inherently linked to an increased surface roughness. The instant application makes no mention of how surface roughness is impacted throughout the process and neither the instant application nor Suzuki make any connection between the shape of the particles and the specific surface roughness value.
Applicant argues that the Additional Example filed in the Declaration clearly demonstrates that the plating parameters of Suzuki would not produce the needle-shaped morphology, specific particle distance characteristics, or interfacial resistance of the claimed embodiments. Examiner respectfully disagrees because Suzuki already can be shown to teach the needle-shaped morphology and specific particle distance characteristics, as shown above regarding claim 1, and the Declaration fails to provide evidence that the process of Suzuki would not produce the claimed interfacial resistance, as discussed above regarding the Declaration.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUSTIN KENWOOD VAN KIRK whose telephone number is (703)756-4717. The examiner can normally be reached Monday-Friday 9am-5pm EST.
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/DUSTIN VAN KIRK/Examiner, Art Unit 1722
/ANCA EOFF/Primary Examiner, Art Unit 1722