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
The amendment filed on November 17th 2025 is acknowledged. Claims 1, 5-8, 10-15, & 18-20 remain pending in the application. Applicant’s arguments to the previous 102 rejections of claim 1 were fully considered and are persuasive. Applicant’s arguments to the previous 103 rejections of the claims were fully considered but are not persuasive. The 102 rejections of Claim 1 in view of Cooke and Balasubramanian are withdrawn due to Applicant’s amendment of Claim 1. The 103 rejections of the claims are withdrawn due to the Applicant’s amendment of Claim 1. However, upon further consideration, a new grounds of rejection is made in view of Kurasawa et al. US 2012/0040242 A1. New rejections follow.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 18 recites “The current collector of claim 1, wherein the composition C3 further comprises a third binder material.”. There is insufficient antecedent basis for this limitation in the claim. There is no mention of a “composition C3” in Claim 1, from which Claim 18 depends, thus the claim is unclear and indefinite. Appropriate correction is required.
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.
Claims 1, 5-8, 11-15, & 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Iwamoto et al. US 2012/0107684 A1, and further in view of Kurasawa et al. US 2012/0040242 A1 and Miyamae et al US 2019/0372125 A1.
Regarding Claim 1, Iwamoto discloses a current collector for an anode [0024] comprising a substrate with a first face (current collector [0024]) and an interfacing layer (lithium silicate layer 15 Figure 1B [0024]). Iwamoto further discloses that the substrate (current collector) is a foil [0037]. Iwamoto discloses that the interfacing layer has a thickness of 0.25-5.0 µm [0031] and a roughness with a depth of 0.5-15 µm [0043], both of which fall within or overlap the respective claimed ranges. Iwamoto further discloses that the interfacing layer comprises convex portions (Figure 1B Item 13) which thus form an array of elements [0033-0035].
Iwamoto is silent as to the interfacing layer (lithium silicate layer) being electronically conductive.
Kurasawa discloses an anode for a lithium ion secondary battery having a substrate (current collector) and an anode active material layer [0036]. Kurasawa discloses that the anode active material layer is a multi-layered structure comprising a first layer and a second layer [0043], wherein the first layer comprises silicon and the second layer comprises silicon and a metal element [0043]. Kurasawa discloses that the second layer can be disposed on the current collector and the first layer is disposed on the second layer [0043]. Thus, Kurasawa discloses an interfacing layer (second layer of anode active material layer) on the substrate (current collector). Kurasawa discloses that the interfacing layer (second layer) comprises a plurality of elements (as shown in Figure 4 Item 4) [0065], similar to the anode structure of Iwamoto comprising columnar bodies as shown in Iwamoto Figure 1B. Kurasawa discloses that the interfacing layer (second layer) comprising a silicon compound and a metal element [043], the metal element being one of nickel, iron, or others [0043], which Kurasawa discloses provides electric conductivity [0039].
Kurasawa discloses that including the metal element in the interfacing layer (second layer) contributes to the inhibition of expansion and shrinkage of the anode [0044], which limits the structural breakage of the anode [0012]. Kurasawa discloses that the metal element (nickel, iron) improves strength and electric conductivity as well [0039].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to replace the materials of the interfacing layer and active material layer of Iwamoto with the materials of the first and second layers of Kurasawa’s active material layer to provide an anode with a substrate (current collector of Iwamoto) and an interfacing layer (second layer of Kurasawa) wherein the interfacing layer is electronically conductive as mentioned by Kurasawa by the inclusion of the metal element [0039], to further provide an anode with inhibited expansion and shrinkage which limits the structural breakage of the anode and improves the strength.
Modified Iwamoto discloses that the convex portions are placed at intervals of 10-100 µm [0042], however fails to specifically disclose that the distance between the convex portions (elements) are within the claimed range.
Miyamae discloses a negative electrode with a layer of protrusions [0026], similar to the convex portions of Iwamoto. Miyamae discloses that the protrusions are arranged at a intervals of 2mm (2000 µm) in Examples 6, 7, 8, & 9, measured as the shorted distance between two adjacent protrusions [0155-0161]. In the case where 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). Accordingly, the distance disclosed in Miyamae anticipates the claimed range set forth in Claim 1. See MPEP 2131.03 I.
Miyamae discloses that placing protrusions in this way allows for even distribution of the electrolyte and adequate volume for lithium metal deposits [0042].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to increase the space between the convex portions of modified Iwamoto to be in the range suggested by Matsui to achieve a distance between convex portions of 2000 µm to provide a battery with even distribution of the electrolyte and adequate volume for lithium metal deposits.
Regarding Claim 5, modified Iwamoto discloses that the interfacing layer comprises a conducting additive (metal element such as nickel or iron as modified by Kurasawa) [Kurasawa 0043].
In regards to the limitation “wherein the interfacing layer is formed by coating a third composition”, the Examiner is treating it as a product by process claim, specifically regarding the phrase “formed by coating”. It has been shown that 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 (MPEP 2113).
Regarding Claim 6, Iwamoto discloses in Figure 2 that the convex portions 13 have a cylindrical shape, which would result in the bases of the convex portions having a disc shape. Thus, Iwamoto discloses that the elements (convex portions) have a disc shape.
Regarding Claim 8, Iwamoto discloses that the elements (convex portions) have a height of 6-12 µm [0041]. In regards to the height of the elements, the Examiner directs Applicant to MPEP 2144.05 I. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Accordingly, it would have been obvious to one of ordinary skill in the art to have selected the overlapping ranged disclosed by Iwamoto because selection of the overlapping portion or ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding Claim 11, modified Iwamoto discloses an anode with a current collector, as mentioned with regards to Claim 1 above, and further discloses an electrode with a first composition (first layer of Kurasawa’s anode active material layer) [Kurasawa 0039-0043]. Modified Iwamoto discloses that the electrode has a face opposite the first face of the substrate with interfacing layer disposed between (see Iwamoto Annotated Figure 1A below).
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Modified Iwamoto Annotated Figure 1A
Iwamoto discloses that the composition for the negative electrode active material comprises an intercalation material of silicon (Kurasawa’s first layer comprises silicon [Kurasawa 0043]), as well as conducting additive (electrical conductor) and a binder [Kurasawa 0045].
Regarding Claims 12 & 20, as mentioned with regards to Claim 11 above, modified Iwamoto discloses that the intercalation material contains silicon [Kurasawa 0010, 0043], thus the silicon concentration of the intercalation material is understood to be 100% by weight, which falls within the claimed ranges of Claims 12 & 20.
Regarding Claim 13, as mentioned with regards to Claim 11 above, modified Iwamoto discloses that the intercalation material is silicon [Kurasawa 0010, 0043].
Regarding Claim 14, modified Iwamoto discloses an electrochemical cell (a lithium ion battery) including the current collector of claim 1 (including the negative electrode of the invention) [0013].
Regarding Claim 15, modified Iwamoto discloses portable electronic devices using the lithium ion battery of the invention [0002-0003], thus discloses energy storage devices.
Regarding Claim 18, as best understood by the Examiner, modified Iwamoto discloses that the interfacing layer (second layer of anode active material layer as modified by Kurasawa) further comprises a binder [Kurasawa 0045].
Examiner notes that Claim 18 was interpreted to be referring to the previously mentioned “composition C3” of Claim 5 wherein the interfacing layer includes the “composition C3”, and thus as required by Claim 18 the interfacing layer includes a binder.
Regarding Claims 7 & 19, modified Iwamoto is relied upon for the reasons given above in addressing Claims 1 & 6, however is silent as to the covering ratio of the bases of the elements of the interfacing layer on the first face of the substrate.
Miyamae discloses a ratio of the area of protrusions to the area of the surface to be 0.2-70%, and more specifically 3-50% [0050], thus Miyamae discloses a covering ratio of the protrusions on the surface to be 0.03-0.50.
Miyamae discloses that an electrode structure with this configuration can allow for the separator to be readily supported by the protrusions and the distance between the separator and the current collector can be consistent, and thus the expansion of the negative electrode can be reduced [0050].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to modify the array of elements of the Iwamoto to have the suggested covering ratio of Miyamae to achieve a covering ratio in the range of 0.03-0.50, which overlaps with the claimed ranges of Claims 7 & 19, to provide a negative electrode with reduced expansion. In regards to the covering ratio, the Examiner directs Applicant to MPEP 2144.05 I. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Accordingly, it would have been obvious to one of ordinary skill in the art to have selected the overlapping ranged disclosed by modified Iwamoto because selection of the overlapping portion or ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05 I.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Iwamoto et al. US 2012/0107684 A1, Kurasawa et al. US 2012/0040242 A1, & Miyamae et al. EP 3576197 A1 as applied to Claim 1 above, and further in view of Isojima et al. WO 2019/151372 A1.
Regarding Claim 10, modified Iwamoto is relied upon for the reasons given above in addressing Claim 1, however is silent as to a second interfacing layer.
Isojima discloses a current collector, a first interfacing layer (Item 2a Figure 2), and a second interfacing layer (Item 2b Figure 2) [Page 5 Lines 29-33]. Isojima discloses that the first interfacing layer, similar to that of Iwamoto, has a surface roughness of 3-10µm [Page 2 Lines 12-16], and that the second interfacing layer (Item 2b) is the same as the first interfacing layer (Item 2a) [Page 5 Lines 39-41] and thus has the same surface roughness (3-10 µm). Isojima discloses in Figure 2 that the interfacing layers are illustrated as being overlaid on top of each other. The phrase “overlaid on top of each other” is given its broadest reasonable interpretation, in this instance referring to a layer being laid over top of another layer, not necessarily in direct contact with.
Isojima discloses that a battery with this configuration enables electron movement between layers during charging and discharging [Page 5 Lines 34-38].
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to incorporate the second interfacing layer of Isojima in the current collector of modified Iwamoto to achieve a battery with electron movement between layers during charging and discharging.
Response to Arguments
Applicant’s arguments with respect to claim 1 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. Applicant argues that Iwamoto does not disclose that the interfacing layer is electronically conductive, however as stated in the rejection above, Iwamoto is not relied on for teaching this amended claim limitation. Kurasawa is used to modify the interfacing layer of Iwamoto with the addition of a metal element, which Kurasawa discloses is to provide electric conductivity, for the benefit of improved strength as well as inhibited expansion and shrinkage of the anode. Accordingly, for the reasons stated above, this argument is unpersuasive.
Applicant argues that there is no motivation identified to relocate Miyamae’s foil topography into Iwamoto’s interfacing layer or an expectation of success that adhesion can still be achieved. Examiner respectfully points out that as stated in the rejection above, the modification of Iwamoto’s interfacing layer was not to include the topography of Miyamae’s foil, but to modify the exact positioning of the convex portions of Iwamoto’s layer as suggested by Miyamae to provide a battery with even distribution of the electrolyte and adequate volume for lithium metal deposits. Thus, the modification was not to change the materials of Iwamoto’s configuration, and therefore there would still be the expectation of success that adhesion would be achieved. Accordingly, for the reasons stated above, this argument is unpersuasive.
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.
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/A.E.G./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 11 February 2026