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 .
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tour et al., US 2018/0175379 A1 in view of Darolles et al., US 2022/0140307 A1 (hereinafter “Darolles”). The attached NEI data sheet (dated 02/25/2019) is relied upon as an evidentiary reference. Note that the only parts of Darolles that are relied upon are those that appear in provisional applications US 62/835308 and 62/835344, both filed 04/17/2019. The disclosures of these provisional applications are therefore available as prior art under 35 USC § 102(a)(2).
Regarding claims 1, 3-4, and 9, Tour discloses electrodes formed from vertically-aligned carbon nanotubes (VACNTs) at least partially covered with germanium arranged in an array on a copper foil current collector [¶ 0004-0005].
Tour further discloses the use of LiCoO2 (LCO) as a anode/cathode [¶ 100 and 101]. As evidenced by the NEI data sheet, the specific aerial capacity of LCO is 2.0 mAh/cm2. Coupled with the disclosed thickness of 10 µm to 2 mm (2000 µm) [¶ 0050], this means that the porosity need only be 0.5% or greater to satisfy the claimed relationship. Considering that, in the same field of endeavor, Darolles discloses an electrode formed from vertically aligned carbon nanotubes with a porosity of 70 to 98% [¶ 0017], it would have been obvious to a skilled artisan, as of the effective filing date of the claimed invention, to modify the electrode of Tour via routine experimentation with the porosity within the range disclosed by Darolles with the expectation to produce an optimized nanoporous electrode. Accordingly, the skilled artisan would have arrived at an optimal value within the claimed range while performing routine experimentation with the porosity of the device of Tour within the range of Darolles to optimize the performance of the device.
Regarding claim 8, Tour discloses the use of an electrolyte 54 stacked atop the VACNT electrode, as shown in Fig. 1C.
Regarding claim 10, Tour discloses the use of CVD to manufacture the electrode by successively depositing layers onto a current collector substrate [¶¶ 0109-0111; Fig. 2].
Regarding claims 2 and 5-6, Tour discloses the limitations of claim 1 but is silent regarding the disposition of a second conducting layer. However, in the same field of endeavor, Darolles discloses an electrode formed from vertically aligned carbon nanotubes comprising a ceramic or polymer coating [¶ 0079] with a thickness of 0.5 to 50 nm [¶ 0118]. Darolles and Tour are analogous art because both are drawn to electrodes comprising VACNTs. Therefore, it would have been obvious to a person of ordinary skill in the art, as of the effective filing date of the claimed invention, to have added a ceramic or polymer coating of Darolles to the electrode of Tour with the expectation to produce a coated VACNT electrode. The skilled artisan would have been motivated to do this because, as taught by Darolles, the coating permits the enhancement of surface characteristics [¶ 0079].
Regarding claims 11-12 and 14, Tour discloses the use of the VACNT electrode as a negative electrode in a battery [¶ 0040] comprising a composite (i.e., solid-state) electrolyte [¶ 0103]. Tour further discloses that the cathode can also be a VACNT electrode [¶ 0040], providing an embodiment that is lithium-free.
Regarding claim 13, as noted in the 112(b) rejection above, the term “element” does not have proper antecedent basis. For purposes of this rejection, the term “element” has been interpreted to have its plain and ordinary meaning consistent with its use in claim 1 (from which claim 13 ultimately depends), which is chemical elements from the periodic table. As the device of Tour is produced by depositing carbon atop a copper foil current collector, the device contains a stack of at least two elements that are electrically connected via their direct bonds.
Response to Arguments
In response to applicant's argument that the combination of Tour and Darolles is erroneous because combining Tour and Darolles would require modifying the basic structure of tour, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, both Tour and Darolles are directed to batteries (see Tour, para 9 and Darolles, para 8). As explained in the previous office action, the examiner relies on Darolles for its teaching of an electrode formed from vertically aligned carbon nanotubes with a porosity of 70 to 98% [¶ 0017] to provide a high energy and power density (paras. 22 and 23).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., lithium metal is formed in the porosity of the anode and then consumed in situ in a controlled and reversible manner during battery operation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that neither Tour nor Darolles does not recognize forming a lithophilic layer intended to promote the nucleation of metallic lithium or to limit dendrite formation (p. 7-8), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, the examiner notes that Applicants do not specifically dispute the Examiner’s reasoning for combining the references and arriving at the claimed invention.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN J JOHNSON whose telephone number is (571)272-1177. The examiner can normally be reached Monday-Friday, 6:30 AM - 3 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JONATHAN JOHNSON
Primary Examiner
Art Unit 1734
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