DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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).
The disclosure of the prior-filed application, Application No. 62/426,977, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Specifically, '977 fails to provide support for all claims of this application. The '977 application does not teach at least the following limitation of claim 1:
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Accordingly, no claims are accorded the filing date of the '977 application; the effective filing date of all claims is presently considered to be 11/28/2017 (filing date of parent application 15/825,097 of which the instant application is a continuation of).
Claim Objections
3. Claims 2-4 and 29 are objected to because of the following informalities: the each recite a four digit number without the use of a comma (e.g., “1800” should be corrected to “1,800”) to employ standard grammar.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
4. 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.
5. Claim 8; claim 13; claim 16; and claim 20; 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.
A) Claim 1 defines a particular type of copolymer. Claim 8 recites that the copolymer is characterized by a molecular weight (MW) of less than about 25,000. The construct does not appear supported. It is noted the claims are not original claims as this is a continuation application such that they must find support in the written description. Accordingly, the feature does not appear supported.
B) Claim 13 recites that an amount of the second subunit in the copolymer is less than around 10 wt.%. The support for the defined copolymer having a first subunit and a “second subunit” selected from acrylic acid, a carboxylic acid, an alginic acid, and a metal salt of any of the foregoing” is P108, 112, and 113 of the parent application PGPUB (note: the term “second subunit is not utilized in the paragraph but the use of this term is reasonably understandable from these paragraphs). The only time the amount of the “second subunit” is defined is relative to when the copolymer comprises both poly(acrylamide) and ammonium halides, and in this specific embodiment, such copolymer binds may “additionally comprise minor (e.g. less than around 5-10 wt%) amounts of acrylic acid, a carboxylic acid, an alginic acid, or metal salt(s) thereof”). Accordingly, there is not teaching for a weight amount of the second subunit within the defined copolymer of claim 1 (lacking poly(acrylamide) and ammonium halides), nor is the range of “less than 10 wt% supported” anywhere in the disclosure. For both of these reasons, the claim is not supported.
C) Claim 16 recites that the conductive additive particles (of the electrode layer) are elongated. The Examiner cannot find such a teaching within the instant application. Only the solid particles of the conductive interlayer are described as elongated (P105 of the parent application PGPUB).
D) Claim 20 recites that the current collector is an electrodeposited metal foil. The Examiner cannot find such a teaching within the instant application. The only electrodeposition described is for a metal coating of copper on the surface of a Ni, Ti, Fe, or carbon-based foil current collector foil (or mesh or foam) (P128 of the parent application PGPUB). The coating is not a foil. The feature is thus not supported.
Appropriate correction and/or explanation is required.
6. 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.
7. Claim 1, and thus dependent claims 2-26; claim 2, and thus dependent claim 3; claim 3; claim 4; claim 8; claim 9; claim 12; claim 13; claim 18; claim 21; claim 23; claim 19; claim 28, and thus claim 29; and claim 29; 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.
A) Each of claims 1-4, 8, 13, 19, 28, and 29 recite a range in conjunction with the “about” or “around” prior to each end point (e.g., “claim 1: in a range from about 0.2 µm to about 40 µm”) rendering the respective claims indefinite because there is nothing in the specification or prior art to provide any indication as to what range is covered by the term "about" or “around” (see Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991) (MPEP 2173.05(b)].
It is noted that the use of approximation terms or terms of degree such as “about” or “around” are not indefinite when the specification provides some standard allowing for one of ordinary skill in the art to understand the scope of the term. If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). For example, in Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992), the phrases "relatively shallow," "of the order of," "the order of about 5mm," and "substantial portion" were held to be indefinite because the specification lacked some standard for measuring the degrees intended. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." Packard, 751 F.3d at 1311.
In the instance scenario, there specification fails to make clear what would or would not be covered by the use of “about” or “around” in conjunction with the parameters recited, and the art does not have a standard recognized for measuring the meaning of the term of degree. Accordingly, each of these claims is indefinite.
B) Claims 1-4 and 29 are rejected for failing to define the metes and bounds given they recite an average areal capacity of the anode (claim 1), volumetric capacity of the electrode layer (claims 2-3), a specific capacity of the composite particles (claim 4), and a specific capacity of the battery (claim 29) without defining the charge/discharge rate or range thereof that this occurs at or within, current density or range thereof that this occurs at, and/or a specific method of determining under what method conditions these capacities are achieved. For example, areal capacity (claim 1) is inversely related charge/discharge rate such that an average areal capacity loading in terms of mAh/cm2 should be reported with its corresponding charge/discharge rate. As evidence, Rogers et al. (US 2014/0220422) teaches an area capacity of a battery electrode (cathode) of 1.1 mAh/cm2 and specifies the charge/discharge rate C/2 (P177). See also Chiang et al. (US 2016/0056490) providing evidence that charge rates are critical in defining the areal capacity (P165):
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Accordingly, it is entirely unclear from the claim or specification at what charge rate (C1, C2, C/2, etc.) or correlated current density the areal capacity loading range defined in the claim is obtained. See also as evidence: Zhang et al., “Stable high-capacity and high-rate silicon based lithium battery anodes upon two-dimensional covalent encapsulation” Nat Commun. 2020 Jul 31, pages 1-9 (copy provided) in which the volumetric capacity (mAh/cm3 = mAh/cc) and specific capacity (mAh/g) of an electrode comprising silicon-based material (or any active material) is a variable dependent upon the current density it is measured at (partial Fig. 4; see entire disclosure):
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Accordingly, it entirely unclear from the claim or specification at what current density the electrode exhibits the volumetric capacity or specific capacity ranges recited in the claims rendering the claim indefinite.
B) Claim 8 recites that the molecular weight is less than about 25,000 with no units given rendering the claim indefinite. The disclosure is entirely silent as to the units used for the molecular weight range (P167 of the parent application), and there are not standard units that this can be attributed to given this could be g/mol, daltons, etc. Accordingly, the claim is rendered indefinite, and the specification does not provide clarity on the matter.
C) Claim 9 recites “the metal” in line 1. There is insufficient antecedent basis for this feature. Changing this to “the metal salt” is problematic because the options recited are not metal salts, but rather, the metal portion of the metal salt.
D) Claim 1 defines a copolymer requiring specific subunit components. Claim 12 then recites, “the copolymer comprises diallyldimethylammonium chloride (DADMAC)…” The components of claim 1 are not an entity that makes up DADMAC (or the other examples listed in claim 12) such that the claim is unclear in its meaning rendering it indefinite. It appears based on the specification that the copolymer defined in claim 1 further comprises [the options listed] (P112-113 of the parent PGPUB).
E) Claims 13, 21, 18, and 21 each recite a percentage of weight of some component but fails to define what this is relative to, thereby rendering each claim indefinite.
F) Claim 23 recites in part, “the second binder comprises the copolymer.” It is not clear if this is meant to define that the copolymer within the electrode layer is also simultaneously within the conductive interlayer; or if this is meant to define that the second binder also comprises a copolymer as defined in claim 1, wherein the first binder and the second binder have the exact same composition (P15, 114 of the parent PGPUB). Either interpretation found in the prior art will be utilized until clarified.
G) Claim 28 recites the following feature:
“…the composite particles exhibit volume expansion in a range of about 8 vol. % to about 160 vol.% during a first charge-discharge cycle and volume expansion in a range of about 4 vol.% to about 50 vol.% during one or more subsequent charge-discharge cycles.”
As noted in MPEP 2173.05(g), Examiners should consider three factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim, (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained, and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. The above underlined functional features do not define well-defined boundaries as there is not a clear cut indication of the scope of the subject matter covered by the claim, the functional claim language only states a result obtained, and one or ordinary skill in the art would not know from the claim terms what structure(s) is/are encompassed by the claim.
For example, it is not clear from the claim terms or the instant application specification what is required in terms of chemical composition, processing, additional components, etc. that provides for composite active material particles that exhibit the results claimed of exhibiting volume expansion in the range of 8 vol.% to 160 vol% during a first charge-discharge cycle and volume expansion in the range of 5 vol.% to 50 vol. % during one or more subsequent charge-discharge cycles. It is further not clear what the overall charge/discharge parameters (e.g., rate of charge/discharge, amount of current/voltage applied during charging cycle, etc.) required to achieve the results obtained. No method of charge/discharge is disclosed, and such methods can vary tremendously.
The Examiner cannot assume that any composite particle simply having the recited structure of “the composite particles comprise carbon and silicon and exhibit an average particle size in the range from about 0.2 µm to about 40 µm” subjected any charging/discharging protocol would intrinsically achieve the result obtained. Looking to the specification as to when this property is obtained is not illuminating: there is no guidance, no examples, and no parameters whatsoever set forth for how to configure a composite particle to achieve the result obtained, or the charging/discharging protocols.
An applicant may resolve the ambiguities of a function limitation by demonstrating that "specification provide[s] a formula for calculating a property along with examples that meet the claim limitation and examples that do not" (see Halliburton Energy Servs., 514 F.3d at 1255-56, 85 USPQ2d at 1663 citing Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1341, 65 USPQ2d 1321, 1326 (Fed. Cir. 2003)). Alternatively, applicant could demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied (see Marosi, 710 F.2d at 803, 218 USPQ at 292), or applicant could amend the claims to recite the particular structure that accomplishes the function. The Examiner has reviewed the specification for formulas, a general guideline, examples, specific structure, etc. and none of these exists in the instant application for the result obtained recited in the claim. Accordingly, the feature is considered indefinite.
Appropriate correction is required. It is noted any future claim amendments should be accompanied with comments that specifically point out support for any claim amendments. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
Prior Art Evaluation
8. Per MPEP § 2143.03:
“"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.)
When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter). Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem. 738 F.2d 453 (Fed. Cir. 1984).
MPEP § 2173.06 further notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
For the above reasons, claims 2-4, 28, and 29 are considered are highly indefinite in view of sections B and G above under 35 U.S.C. 112(b)/second paragraph to the point that it would be improper to reject such a claim on the basis of prior art. As in In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970), it would be improper to ignore claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.
In the interest of compact prosecution, the indefinite limitation of claim 1 (see section B) with respect to the average areal capacity is addressed as best as possible in terms of a general teaching that it is known to optimize average areal capacity loading.
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 1, 5-11, 14-17, 20, 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211) and Sikha et al. (US 2016/0013480).
Regarding claim 1, Park teaches a Li-ion battery anode (P7, 34, 91, 103; entire disclosure relied upon), comprising:
a current collector 11 (P59, 88-89; Fig. 1A); and
an electrode layer 13 arranged on the current collector 11 (59, 74, 87; Fig. 1A), the electrode layer 13 comprising composite particles (P49-53, 86) and a binder (P74) mixed with the composite particles (P74), the binder adhering to the composite particles (considered intrinsic to the described binder- the “binding” function in the name of the entity itself, as well as intrinsic to the recited materials described which have the same composition as that claimed as detailed below; alternatively, the binder binding/adhering to the composite particles is considered a prima facie obvious expedient in terms of the desired functionality of the taught binder), the composite particles adhering to the current collector 11 (via the interlayer 12 – P35, 42-43; note this is the identical construct of the instant application- see P115 of the parent application PGPUB),
wherein:
the composite particles comprise carbon and silicon (P48-53, 86) and (intrinsically) exhibit an average particle size of some value that is not disclosed; and
the binder comprises a copolymer comprising an acrylamide subunit and a second subunit selected from an acrylic acid, a carboxylic acid, an alginic acid, and a metal salt of any of the foregoing (P79, see also P35-47, 54-55).
Park is silent as to the composite particles that comprise carbon and silicon (P48-53, 86) exhibit an average particle size in a range from about 0.2 µm to about 40 µm. In the same field of endeavor, Umeno teaches analogous art of an anode material for a rechargeable lithium battery that forms a lithium-ion anode, the anode material being a specific example of the taught “composite of a silicon-based material and a carbon-based material” (P49) of Park and including silicon-carbon (Si-C) core-shell composite particles arranged with carbon in respective shells (P54-98) and with the Si particles being nano-sized Si particles (P64; entire disclosure relied upon). With respect to the average particle size, Umeno teaches the average particle diameter of the composite material for the anode is preferably 0.1 to 50 µm (P79) with an analysis of how the average particle diameter is linked with specific area which in turn has effects on initial charge efficiency, smoothness of the achieved anode, and peeling from the current collector (P79-81).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide the composite particles of Park comprising carbon and silicon with an average particle diameter of 0.1 to 50 µm (P79), the range claimed entirely lying inside the range taught by Umeno, given Umeno teaches an analogous construct and that this is a suitable average particle diameter for known carbon-silicon composite particles utilized within an Li-anode electrode composition (P79-81), with the average particle diameter being a known result effective variable in terms of initial charge efficiency, smoothness of the achieved anode, and peeling from the current collector (P79-81). Accordingly, a prima facie case of obviousness exists with respect to the claimed range relative to the taught range (MPEP § 2144.05: In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists), with the courts further holding the following:
“[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 discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Park is also silent as to, “…the Li-ion battery anode exhibits an average areal capacity loading in a range of about 2 mAh/cm2 to about 10 mAh/cm2” as claimed, wherein it is not clear at what C-rate, correlated current density, and/or any method conditions that this feature is observed (see rejection under 35 U.S.C. 112(b)/second paragraph). In the interest of compact prosecution, the limitation is addressed as best as possible. Sikha teaches analogous art of battery electrodes and design and teaches that the overall goal is to fabricate high-capacity energy storage devices and that to increase battery cell energy density, it is highly desirable to pack more materials into each battery cell to increase the electrode loading (mAh/cm2) (P21-22). Sikha teaches that methods to increase electrode loading include increasing the amount of active materials per unit area (P22). Accordingly, it is a known goal in the prior art to achieve high-capacity batteries by way providing a battery with high cell energy density, and that in order to do so, the electrode loading is increased by way of increasing the amount of active materials per unit area (P21-22).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to determine the optimum or workable electrode loading (mAh/cm2) possible for the anode of Park in order to providing a battery with high cell energy density by way of increasing the amount of active materials per unit area (P21-22). With respect to the specific range claimed, the court has held that “Where 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 5 and 6, Park fails to disclose wherein the composite particles comprise nanostructured or nano-sized silicon particles (claim 5) or that the composite particles comprise carbon coatings (claim 6); however, Umeno teaches analogous art of an anode material for a rechargeable lithium battery that forms a lithium-ion anode, the anode material being a specific example of the taught “composite of a silicon-based material and a carbon-based material” (P49) of Park and including silicon-carbon (Si-C) core-shell composite particles arranged with carbon in respective shells (“the composite particles comprise carbon coatings”) (P54-98) and with the Si particles being nano-sized Si particles (“the composite particles comprise nanostructured or nano-sized silicon particles”) (P64; entire disclosure relied upon). Umeno teaches that when the taught composite material is used as anode material of a lithium secondary battery, there battery achieve has high safety, large discharge capacity and excellent charge-discharge cycle property (P45). Additionally, the court has held (MPEP 2144.07):
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) ("…selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
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 taught “composite of a silicon-based material and a carbon-based material” of Park the specific, known composite of silicon and carbon material of Umeno given the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination, Umeno additionally teaching that when the taught composite material is used as anode material of a lithium secondary battery, there battery achieve has high safety, large discharge capacity and excellent charge-discharge cycle property (P45).
Regarding claim 7, Park teaches the copolymer is water- soluble (see the method of providing the copolymer utilizes water as a solvent (P69-74)). Moreover, a a composition and its properties are inseparable (see MPEP § 2112.01, II: regarding composition claims, if the composition is the same, it must have the same properties). Lastly, a person having ordinary skill in the art would immediately recognize that a copolymer having the defined subunits would result in a water-soluble copolymer given it would be immediately known that acrylamide, carboxylic acid, and/or alginic acid subunits are each water-soluble such that the copolymer resulting therefrom would be water soluble.
Regarding claim 8, Park teaches wherein the copolymer may have a weight average molecular weight of about 1,000 to 1,000,000 Daltons (P47) (“a molecular weight (MW) of less than about 25,000” overlapping with range with an assumption that the molecular weight can take on any units taught in the prior art].
Regarding claim 9, Park teaches wherein the metal is selected from at least sodium (Na), lithium (Li), or potassium (P65-72; claim 3).
Regarding claim 10, Park teaches wherein the copolymer may comprise halide anions given the copolymer may further include PVDF-HFP which comprises fluoride (P79).
Regarding claim 11, Park teaches wherein the copolymer comprises ammonium cations (P66-67: ammonimum hydroxide is taught as reacting with the copolymer to provide a cation-substituted polycarboxycic acid copolymer) (P66-68; see claim 3).
Regarding claim 14, Park teaches wherein the electrode layer comprises conductive additive particles (P87 teaches the use of “a conducting aid” or “an ion conductive polymer”). Park does not explicitly teach the conducting aid is in the format of particles; however, the positive electrode active material composition also teaches the use of a conducting agent and the taught materials are in the format of particles including at least graphite granules, carbon fibers, carbon nanotubes, metal powder, metal fibers, etc. (P98).
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 the taught conducting aid agents taught for the positive active material composition and utilize the same for the taught conducting aid of the negative active material composition given the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 15, Park as discussed above (see rejection of claim 14) teaches wherein the conductive additive particles comprise carbon (P87, 98).
Regarding claim 16, Park as discussed above (see rejection of claim 14) teaches the use of carbon fibers, carbon fibers, metal fibers, etc. which are each examples of particles that are elongated as claimed.
Regarding claim 17, Park as discussed above (see rejection of claim 14) teaches wherein the conductive additive particles comprise carbon nanotubes (P98). Park does not explicitly teach single-walled carbon nanotubes. There are only two known options for carbon nanotubes as would be immediately known to those skilled in the art: single-walled carbon nanotubes (SWCNTs) or multi-walled carbon nanotubes (MWCNTs). Accordingly, the selection of a specific type of carbon nanotubes from only two known classes thereof is prima facie obvious given the species options of the genus taught can be at once envisioned by a person having ordinary skill in the art (MPEP 2131.02).
Regarding claim 20, Park teaches wherein the current collector may be a metal foil (P88-89). Park does not teach the method by which the metal foil is achieved (i.e., “an electrodeposited metal foil”); however, the feature of the metal foil being an electrodeposited metal foil is a a product-by-process claim, wherein the Courts have held:
“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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
There is no evidence that the product-by-process language as recited of being electrodeposited imparts specific structural characteristics to the product. As such, Park’s metal foil current appears to meet the structure set forth. Alternatively, any differences provided by the product-by-process limitation would provide a product that is obvious from the metal foil current collector of Park. Regarding product-by-process limitation, see MPEP § 2113.
Regarding claim 22, Park teaches the Li-ion battery anode additionally comprising a (ionically) conductive interlayer 12 between the current collector 11 and the electrode layer 13 (P59; 43; Fig. 1).
Regarding claim 23, Park teaches wherein:
the binder of the electrode layer is a first binder;
the conductive interlayer comprises a second binder; and
the second binder comprises the copolymer- [interpreted to mean that the second binder is a copolymer as defined in claim 1, wherein the first binder and the second binder have the same composition- see rejection under 35 U.S.C. 112(b)/second paragraph] (P41, 79; entire disclosure relied upon).
Regarding claim 24, Park teaches wherein:
the binder of the electrode layer is a first binder;
the conductive interlayer comprises a second binder; and
the second binder comprises a poly(vinyl alcohol) (“PVA”) (P41, P79 teaches the binder material may further comprise PVA).
Regarding claim 25, Park teaches wherein:
the binder of the electrode layer is a first binder;
the conductive interlayer comprises a second binder; and
the second binder comprises a second copolymer comprising a second acrylamide subunit and a third subunit selected from a second acrylic acid, a second carboxylic acid, a second alginic acid, and a second metal salt of any of the foregoing (P41, 79, entire disclosure relied upon).
11. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211) and Sikha et al. (US 2016/0013480) as applied to at least claim 1 above, and further in view of Wandry et al., “Diallyldimethylammonium Chloride and its Polymers,” Laboratory of Polymers and Biomaterials, Department of Chemistry, Swiss Federal Institute of Technology, CH-105 Lausanne Switzerland, Advances in Polymer Science, Vol. 145, 1999, pages 1-61 (copy provided).
Regarding claim 12, Park teaches that the binder may comprise another binder material available in the art (P79), but fails to specifically teach wherein the copolymer [further] comprises diallyldimethylammonium chloride (DADMAC), diallyldiethylammonium chloride (DADEAC), methylammonium chloride, N,N-diallyl-N-propylammonium chloride, methylammonium bromide, ethylammonium bromide, propylammonium bromide, butylammonium bromide, methylammonium fluoride, ethylammonium fluoride, propylammonium fluoride, and/or butylammonium fluoride.
In the field of copolymer composition, Wandry teaches the use of diallyldimethylammonium chloride (“DADMAC”) (among other alkyl halides) and that the highly hydrophilic permanently charged quanternary ammonium groups (i.e., the group found in all of the above compounds) within a copolymer provides a copolymer with high water solubility and solution properties (p. 127). Wandry specifically teaches the copolymerization of DADMAC with acrylamide (p.134) (claim 1 requires the copolymer to have an acrylamide submit), as well as the copolymerization with acrylic acid comonomers (i.e., the “second substituent” of claim 1) (Table 7, p. 148-149). Section 5, pages 150- delves into the solution properties of diallyldimethylammonium chloride polymers, wherein one having ordinary skill in the art knows that the properties of a copolymer are a result of the properties of the individual monomer/constituent units incorporated therein.
The reference to Wandry drawn to specific copolymer composition is considered reasonably pertinent to the problem faced by the inventor which is to provide “needed improvement(s)” in electrode formulations (P8 of the parent PGPUB – all references made to such) with the electrode formulation including a first binder material (P15 of the parent PGPUB) with the desire to provide binders that are dissolved or dispersed in water (P68).
Therefore, in the context of Park which teaches the copolymer of claim 1 and the binder may comprise another binder material available in the prior art (P&9), and the problem faced by the inventor which is to obtain needed improvements in electrode formulations with the desire that the selected binder is dissolved or dispersed in water, it is considered an obvious expedient for one having ordinary skill in the art to look to known other binder materials that achieve this functionality, and to select DADMAC to be part of the copolymer binder given Wandry teaches it is known to copolymerize with the taught “subunits” of claim 1, and that the highly hydrophilic permanently charged quanternary ammonium groups (i.e., the group found in all of the claimed compounds) within a copolymer provides a copolymer with high water solubility and solution properties (p. 127).
12. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211) and Sikha et al. (US 2016/0013480) as applied to at least claim 1 above, and further in view of Oyasato et al. (US 2003/0069354).
Regarding claim 13, Park fails to disclose the amounts of the subunits within the copolymer (P79) and that the amount of the second subunit in the copolymer is less than around 10 wt. % as claimed. The second subunit as claimed can be interpreted as the polycarboxylic acid component or the alginic acid (P79).
In the field of endeavor of copolymer resin compositions, Oyasato teaches analogous art of copolymer resin compositions including alginic acid in the copolymer, and that the amount thereof is in the range of 0.1 to 10 wt% by weight as this results in a copolymer having high-melt tension and transparency with uniformity of the reaction being lost if 10 wt% is exceeded (71).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide the alginic acid component of the copolymer of Pakr in an amount of 0.1 to 10 wt% given Oyasto teaches analogous art of copolymer resin compositions including alginic acid in the copolymer, and that a suitable amount is in a range of 0.1 to 10 wt% by weight, thereby providing the predictable, taught results of providing a copolymer having high-melt tension and transparency with uniformity of the reaction being lost if 10 wt% is exceeded (71).
13. Claim 17 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211) and Sikha et al. (US 2016/0013480) as applied to at least claims 1 and 14 above, and further in view of Nakayama et al. (US 2017/0338483).
Regarding claim 17, Park as discussed above (see rejection of claim 14) teaches wherein the conductive additive particles comprise carbon nanotubes (P98). Park does not explicitly teach single-walled carbon nanotubes. There are only two known categories for carbon nanotubes as would be immediately known to those skilled in the art: single-walled carbon nanotubes (SWCNTs) or multi-walled carbon nanotubes (MWCNTs). Accordingly, the selection of a specific type of carbon nanotubes from only two known categories thereof is prima facie obvious given the species options of the genus taught can be at once envisioned by a person having ordinary skill in the art (MPEP 2131.02).
Additionally, for the avoidance of doubt, Nakayama is applied in the instant alternative rejection teach that it is a known technique to provide carbon nanotubes as a conductive aid within an active material layer of an electrode, and that examples of carbon nanotubes that may be used include single-walled caron nanutbes and multi-wall carbon nanotubes (P62).
14. Claims 18 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211) and Sikha et al. (US 2016/0013480)
as applied to at least claims 1 and 14 above, and further in view of Kimura et al. (US 2016/0344015).
Regarding claim 18, Park fails to disclose teaches wherein the electrode layer comprises less than 2 wt. % of the conductive additive particles.
In the same field of endeavor, Kimura teaches analogous art of an anode containing silicon-containing particles to which conductive additives are included, and that the content of the conductive additive with respect to the total amount of the active material layer 102 is preferably greater than or equal to 1 wt% and less than or equal to 10 wt%, and more preferably 1-5 wt% (P196). 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).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to utilize 1-10 wt%, more preferably 1-5 wt% of the conductive additives of Park given Kimura teaches an analogous anode composition and that this is a suitable range for the conductive additives (P196).
15. Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211) and Sikha et al. (US 2016/0013480)
as applied to at least claim 1 above, and further in view of Ito et al. (US 2017/0229743).
Regarding claim 19, Park teaches wherein the current collector is a metal foil (P88-89) but is silent as to its average thickness (claimed range is “an average thickness in a range from around 4 µm to around 15 µm”). Looking to analogous constructs, Ito teaches analogous art of a lithium secondary battery in which the negative electrode (“anode”) has an active material applied to a copper foil with an average thickness of 10 µm (P74).
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 constructs to determine an appropriate average thickness of the metal foil current collector, and to select an average thickness of 10 µm for the metal foil current collector of Park in view of the teachings of Ito that this is a suitable average thickness for such an entity in an analogous construct (P74).
16. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211) and Sikha et al. (US 2016/0013480)
as applied to at least claim 1 above, and further in view of Sawa et al. (US 2016/0204431).
Regarding claim 21, Park teaches wherein the current collector may comprise a copper foil, but fails to explicitly teach the use of a copper (Cu) alloy foil comprising less than 99 wt. % copper (Cu).
In the same field of endeavor, Sawa teaches analogous art of a negative electrode (i.e., anode) for a lithium secondary battery including a silicon-based active material and metal current collector, wherein the current collector is a copper alloy foil with a composition of 96.2% by mass of Cu, 3% by mass Ni, 0.65% by mass Si, and 0.15% Mg (P46).
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 metal current collector of Park that may comprise one or more metals including copper, nickel, etc. that specified by Sawa having the composition of 96.2% by mass of Cu, 3% by mass Ni, 0.65% by mass Si, and 0.15% Mg (P46) as the Courts have held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); MPEP 2144.07.
17. Claims 13 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211) and Sikha et al. (US 2016/0013480) as applied to at least claim 1 and 22 above, and further in view of Ikenuma et al. (US 2015/0111101).
Regarding claim 13, Park fails to disclose the amounts of the subunits within the copolymer (P79) and that the amount of the second subunit in the copolymer is less than around 10 wt. % as claimed. The second subunit as claimed can be interpreted as the polycarboxylic acid component or the alginic acid (P79).
In the same field of endeavor, Ikenuma teaches analogous art of a lithium ion negative electrode including silicon and carbon active materials (P56, 99-100, 104) in an active material layer, and teaches the binder utilized in the active material layer preferably has carboxyl groups (-COOH) in an amount of 0.2 wt. to less than 10 wt% (P132). Accordingly, it is a known technique to provide the carboxylic acid component achieving carboxyl groups in an amount entirely within the range claimed as taught by Ikenuma (P132).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide the (poly)carboxylic acid component of Park in an amount of 0.2 wt. to less than 10 wt% as taught by Ikenuma given the technique and construct are known, the use of the carboxyl group in this amount being a suitable for a binder utilized in the analogous construct of Ikenuma (P132).
Regarding claims 26-27, Park fails to disclose wherein the (ionically) conductive interlayer comprises elongated conductive particles (claim 26), wherein the elongated conductive particles comprise single-walled carbon nanotubes (claim 27)1.
In the same field of endeavor, Ikenuma teaches analogous art of a lithium ion negative electrode including silicon and carbon active materials (P56, 99-100, 104) in an active material layer, wherein a layer for increasing adhesion is provided between a current collector and the active material layer and termed the “first electrode layer” (i.e., “interlayer”) (P58, 81), wherein the first electrode layer (“interlayer”) “preferably includes conductive particles for providing conductive paths between the current collector and the active material layer or between the active material particles” (P82). Ikenuma teaches the conductive particles included in the first electrode layer (“interlayer”) include a carbon material with the examples of carbon fibers, carbon nanotubes, or flaky graphene (i.e., elongated conductive particles”) (P91-92).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to provide an embodiment of Park in which the interlayer 12 of Park includes conductive particles, and specifically elongated conductive particles including carbon nanotubes, given the technique and construct are taught by Ikenuma and provide the taught, predictable result of providing conductive paths between the current collector and the active material layer (P82).
Ikenuma does not explicitly teach single-walled carbon nanotubes. There are only two known categories for carbon nanotubes as would be immediately known to those skilled in the art: single-walled carbon nanotubes (SWCNTs) or multi-walled carbon nanotubes (MWCNTs). Accordingly, the selection of a specific type of carbon nanotubes from only two known classes thereof is prima facie obvious given the species options of the genus taught can be at once envisioned by a person having ordinary skill in the art (MPEP 2131.02).
18. Claim 27 is alternatively are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2015/0243997) in view of Umeno et al. (US 2002/0086211), Sikha et al. (US 2016/0013480), and Ikenuma et al. (US 2015/0111101) as applied to at least claim 26 above, and further in view of Nakayama et al. (US 2017/0338483).
Regarding claim 27, Park as modified by Ikenuma teaches the use of carbon nanoutbes within the interlayer (see rejection of claim 26). As detailed above, Ikenuma does not explicitly teach single-walled carbon nanotubes. There are only two known categories for carbon nanotubes as would be immediately known to those skilled in the art: single-walled carbon nanotubes (SWCNTs) or multi-walled carbon nanotubes (MWCNTs). Accordingly, the selection of a specific type of carbon nanotubes from only two known categories thereof is prima facie obvious given the species options of the genus taught can be at once envisioned by a person having ordinary skill in the art (MPEP 2131.02).
Additionally, for the avoidance of doubt, Nakayama is applied in the instant alternative rejection teach that it is a known technique to provide carbon nanotubes as a conductive aid within an active material layer of an electrode, and that examples of carbon nanotubes that may be used include single-walled caron nanotubes and multi-wall carbon nanotubes (P62).
Double Patenting
19. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
20. Claims 1-3, 5-7, 9-12, 14-15, 18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,581,523 in view of Umeno et al. (US 2002/0086211).
Regarding claims 1-3, 7, 9-12, and 14 claim 1 of '523 is reproduced below for convenience.
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All of the subject matter of claims 1-3 and 14 of the instant application is found within the '523 independent claim with the exception that the electrode layer of the instant application includes composite particles comprising carbon and silicon that exhibit an average particle size in the range from 0.2- 40 µm, whereas the '523 application requires Si-comprising active material with a narrow range of 0.2-10 µm. Thus the Si-comprising active material of '523 does not require the active material to be in the format of composite particles that comprise carbon.
Looking to known “Si-comprising active material,” Umeno teaches analogous art in the same field of endeavor of an anode material for a rechargeable lithium battery that forms a lithium-ion anode, the anode material being a specific example of the genus of a “Si-comprising active material” of the '523 claim, the anode material including silicon-carbon (Si-C) core-shell composite particles arranged with carbon in respective shells (P54-98). Umeno teaches that when the taught composite material is used as anode material of a lithium secondary battery, there battery achieve has high safety, large discharge capacity and excellent charge-discharge cycle property (P45). Additionally, the court has held (MPEP 2144.07):
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) ("…selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.).
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 taught “Si-comprising active material” of the '523 claim the specific, known composition of composite particles of silicon and carbon material of Umeno given the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination, Umeno additionally teaching that when the taught composite material is used as anode material of a lithium secondary battery, there battery achieve has high safety, large discharge capacity and excellent charge-discharge cycle property (P45).
It is noted that the '523 claim recites the electrode coating:
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The configured to statement is evaluated according to the structure of the polymer binder taught within the '523 application that the polymer binder has that achieves the result claimed. The '523 application teaches the binder comprises the specific composition of lines 12-14 of the instant claim (see C16/L14-C19/L41):
“…the binder comprises a copolymer comprising an acrylamide subunit and a second subunit selected from an acrylic acid, a carboxylic acid, an alginic acid, and a metal salt of any of the foregoing.”
Accordingly, the specific binder composition defined in the instant application claim 1 is encompassed by the structure taught for the configured to statement within claim 1 of '523. This analysis is further applied to: claims 7, 9, 10, 11, 12 with respect to the defined features of the copolymer.
Regarding claims 5-6, Umeno as relied upon in the rejection of claim 1 teaches the silicon-carbon (Si-C) core-shell composite particles arranged with carbon in respective shells (“the composite particles comprise carbon coatings”) (P54-98) and with the Si particles being nano-sized Si particles (“the composite particles comprise nanostructured or nano-sized silicon particles”) (P64; entire disclosure relied upon).
Regarding claims 15-18, the subject matter of these claims is found in at least claim 14 of '523.
Regarding claim 20, the subject matter of is found in at least claims 8 of '523. It is noted that the electrodeposited feature of the claim is a product-by-process limitation and the structure is rendered met or obvious from that of the structure claimed in '523.
21. Claims 8, 13, 19, 21-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,581,523 in view of Umeno et al. (US 2002/0086211) as applied to at least claim 1 above, and further in view of the corresponding reference(s) for the respective claim identified above in the prior art rejections (not listed or individualized here).
Regarding claims 8, 13, and 21-27, all of the subject matter in these claims is met by the corresponding prior art reference(s) identified above within the prior art rejections for the respective claim(s) such that the '523 claim set in view of these references meets the subject matter identified for these respective claims in the rejections above, entirely incorporated here.
Conclusion
22. 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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/AMANDA J BARROW/ Primary Examiner, Art Unit 1729
1 It is noted that Park teaches that, “In an embodiment, the interlayer does not include a conducting agent. When the interlayer does not include a conducting agent, which may be an inorganic material, the interlayer may be easily formed as a thin film.” (P37). This does not amount to teaching away as it is describing one embodiment of the interlayer. The comment is made for clarity of the record and that an argument that Park “teaches away” from the use of a conducting agent will not be held as persuasive. "The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). Furthermore, Ikenuma provides the necessary teaching, suggestion, and motivation to utilize conducting agents in such a layer to achieve the taught result of providing conductive paths between the current collector and the active material layer (P82). It is noted that [a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006).