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 40-52 and 54-57 were rejected and claim 53 was objected in the Office Action mailed on 09/03/2025.
Applicant filed a response, amended claims 40, 42, 45, 50-53 and 57, cancelled claim 41, and added claim 61.
Claims 40 and 42-61 are currently pending in the application, of claims 58-60 are withdrawn from consideration. Claims 1-39 were previously cancelled.
Claims 40, 42-57 and 61 are being examined on the merits in this Office Action.
Response to Arguments
In response to the claim amendments, the previous claim objections are withdrawn from the record.
Applicant’s arguments have been fully considered but are not persuasive. The rejection of claims 40–51 under 35 U.S.C. § 103 over Golodnitsky et al. (US 2013/0244102) is maintained for the reasons set forth below.
1. Golodnitsky Teaches the Claimed Structural and Functional Relationships
Applicant argues that Golodnitsky fails to teach “electrophoretically depositing the first MEA electrode … on the electrically insulating ion-permeable membrane” because Golodnitsky initially deposits an electrode on a conductive substrate and subsequently deposits the separator.
This argument is not persuasive because the claims are process claims, not product-by-process claims, and do not exclude the use of a temporary conductive support during fabrication.
As indicated in the previous Office Action, Golodnitsky teaches:
An electronically insulating, ionically conductive separator (e.g., YSZ) positioned between two electrodes (¶[0003], [0021], [0038]).
That the separator has two opposed surfaces capable of supporting electrode material (Fig. 7; Examples 1, 5, and 7).
That electrophoretic deposition is used to form electrode layers in contact with the separator.
The claimed “electrically insulating ion-permeable membrane” therefore reads on Golodnitsky’s separator once formed. The claims do not require that the membrane be formed ab initio before any electrode deposition, nor do they preclude intermediate fabrication steps.
2. Physical Separation and Ionic Connection Are Inherent
Applicant contends that Golodnitsky does not teach “physical separation of precursors during electrophoretic deposition.”
However, paragraph [0003] teaches electrodes that are:
Physically separated by an electronically insulating separator, and
Ionically connected through that separator.
Once the separator is present—as taught by Golodnitsky—the claimed relationship between precursors across the membrane is inherently satisfied when electrophoretic deposition occurs on opposing surfaces.
The claims do not require that both suspensions reside in a single bath, nor do they exclude multiple baths or intermediate steps. The functional limitation is the physical separation and ionic connectivity, which Golodnitsky clearly teaches.
3. Concurrent vs. Sequential Deposition Is an Obvious Process Variation
Applicant acknowledges—and the Office agrees—that Golodnitsky teaches sequential deposition. However, the Office properly determined that concurrent deposition would have been an obvious modification.
As established in: New Wrinkle v. Marzall, 93 USPQ 92 and New Wrinkle v. Watson, 96 USPQ 436
Simultaneous performance of process steps is an obvious alternative to sequential performance where the steps are known to be independently operable.
Here:
Golodnitsky teaches that each electrode can be electrophoretically deposited.
The separator is ionically conductive and electronically insulating.
Concurrent deposition merely applies known EPD principles simultaneously on opposite sides of the separator.
This represents a predictable use of prior art elements according to their established functions, consistent with KSR Int’l Co. v. Teleflex, 550 U.S. 398 (2007).
4. Applicant’s “Physical Impossibility” Argument Is Unsupported
Applicant asserts that concurrent deposition would have been “physically impossible” based on Golodnitsky’s process.
This argument is conclusory and unsupported by evidence. Golodnitsky does not teach that concurrent deposition is impossible—only that sequential deposition is one embodiment. The absence of an explicit teaching of concurrency does not constitute a teaching away.
Moreover, electrophoretic deposition on opposite surfaces of an ionically conductive membrane using opposing electrodes is well within the level of ordinary skill and does not require undue experimentation.
5. Alleged Advantages Do Not Establish Non-Obviousness
Applicant argues that concurrent deposition:
Reduces processing time,
Prevents aggregation, and
Improves manufacturing efficiency.
These are expected benefits of performing steps concurrently rather than sequentially and therefore do not constitute unexpected results. Efficiency improvements such as reduced time and handling are precisely the type of predictable advantages contemplated by KSR and MPEP § 2143.
No objective evidence (e.g., comparative data, criticality, or unexpected performance metrics) has been provided to rebut the prima facie case.
6. Claim Amendments Do Not Overcome the Rejection
The added limitations reciting:
Physical separation and ionic connection “during electrophoretic deposition,” and
Concurrent deposition of the first and second MEA electrodes,
do not patentably distinguish over Golodnitsky in view of the above reasoning. These limitations represent an obvious process optimization of a known EPD method using known materials performing their known functions.
In conclusion, The Office has established a prima facie case of obviousness because:
Golodnitsky teaches all claimed structural relationships;
Concurrent deposition is an obvious alternative to sequential deposition; and
Applicant has not provided persuasive evidence of teaching away, technical incompatibility, or unexpected results.
Accordingly, the rejection of claim 40 under 35 U.S.C. § 103 is maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 40 and 42-51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Golodnitsky et al. (U.S. Patent Application Publication 2013/0244102).
Regarding claims 40, Golodnitsky teaches a method for electrophoretic deposition (EPD) of a membrane-electrode assembly (MEA) comprising a first MEA electrode and a second MEA electrode (i.e., first electrode/separator/second electrode can be EPD in sequence) (paragraph [0038]), comprising:
i. providing an electrically insulating ion-permeable membrane having two opposed surfaces comprising a first surface and a second surface (i.e., YSZ) (see examples 1 and 7, paragraphs [0003], [0039], [0041]-[0044], [0052]-[0056]) (see figure 7 where YSZ includes two surfaces); and
ii. electrophoretically depositing the first MEA electrode from a suspension comprising a first precursor (i.e., LFP) (paragraph [0041]-[0044]) on the first surface of the membrane (see example 1 and 7) (figure 7) and electrophoretically depositing the second MEA electrode from a second suspension comprising a second precursor (i.e., MCMB) (paragraph [0052]-[0056]) on the second surface of the membrane (see example 1 and 7) (figure 7), wherein the first precursor is physically separated from and ionically connected to the second precursor by said membrane (paragraph [0003]).
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Golodnitsky does not teach the method as being concurrent or deposited concurrently. However, as indicated above, Golodnistky teaches the method where the suspension is deposited in sequence on the first surface and the second surface respectively. However. The courts have held that simultaneous steps are obvious over successive steps in similar processes (New Wrinkle v. Marzall 93 USPQ 92, New Wrinkle v. Watson 96 USPQ 436). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sequential deposition of Golodnitsky to a concurrent deposition, since doing so represents a predictable variation of a known method. Concurrent processing is an art-recognized equivalent to sequential processing that would have been considered to predictably improve efficiency (e.g., reduce processing time) without requiring undue experimentation. As to the limitation “during electrophoretic deposition,” as indicated above, such do not patentably distinguish over Golodnitsky in view of the above reasoning. These limitations represent an obvious process optimization of a known EPD method using known materials performing their known functions.
Regarding claim 42, Golodnitsky teaches the membrane is a porous separator such as a ceramic separator (i.e., YSZ) (paragraph [0021], [0038]) (Examples 1, 5 and 7).
Regarding claim 43, Golodnitsky teaches the membrane is a porous separator as described above in claim 1 and 42. Golodnitsky does not teach the specifics of the separator having a mean pore size as recited in the instant claim. However, Golodnitsky teaches the separator is porous, allows ionic conduction and the porosity enables deposition of layers (paragraph [0039]). Absent of criticality, a recited numerical range is generally considered a result-effective variable if the prior art teaches the property (i.e., porosity) and its function (i.e., ionic transport and deposition). 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 (see MEPE 2144.05). The prior art makes clear that the separator must be porous enough for ionic transport and deposition, which would reasonable suggest controlling the pore size within known workable ranges. It would have been obvious to a person of ordinary skill in the art to select a mean pore size within the claimed range through routine optimization, since pore size is a result-effective variable that directly affects ionic conductivity and separator performance. The claimed range is considered to be an obvious optimization of the prior art porous separator.
Regarding claim 44, Golodnitsky teaches the first precursor, the second precursor or both are in a form of colloidal particles suspended in a liquid electrolyte (paragraph [0005], [0061], claim 36), wherein the colloidal particles of the first precursor and of the second precursor have opposite polarities (i.e., LFP and MCBM are known to have different polarities as one is used for cathodes and the other one for anodes) (paragraph [0010]).
Regarding claim 45, Golodnitsky teaches the electrolyte comprises a solvent such as acetone, ethanol, acetylacetone (paragraph [0042]-[0045], [0048], [0061]).
Regarding claim 46, Golodnistky teaches the first precursor comprises a first electrode active material and the second precursor comprises a second electrode active material (i.e., LFP and MCMB) (see example 1, 5 and 7).
Regarding claims 47-48, Golodnitsky teaches the first electrode active material comprises LiFePO4 (paragraph [0018]).
Regarding claim 49-50, Golodnitsky teaches the first electrode active material is carbon such as carbon beads (i.e., MCMB) (see Example 5 and 7) (paragraph [0014]).
Regarding claim 51, Golodnitsky teaches the first precursor comprises a charging agent such as PVDF, PEI and a conducting agent such as carbon graphite and MCMB (see Examples 1-7).
Claim(s) 52 is/are rejected under 35 U.S.C. 103 as being unpatentable over Golodnitsky et al. (U.S. Patent Application Publication 2013/0244102) as applied to claim 1 above, and further in view of Gaben et al. (U.S. Patent Application Publication 2019/0173129).
Regarding claim 52, Golodnitsky teaches the method as described above in claim 1 to include the first and second precursor. Further Golodnitsky teaches the first precursor comprising LiFePO4, PEI and carbon black (see Example I, paragraphs [0041]-[0044]) and the second precursor can include Li4Ti5O12 and carbon black (paragraph [0019], see Examples 1, 3-5, 7 and 9).
Golodnitsky does not teach the first and second precursor having PEI.
Gaben, directed to a method for fabrication of a battery (abstract), teaches electrophoretically depositing a membrane electrode assembly (i.e., electrolytic thin film) comprising a colloidal suspension of particles (paragraph [0031], [0057]-[0061]). Further, Gaben teaches adding to the suspension polyacrylic acid (PAA) that acts as a complexing agent (paragraph [0173]) which means the PAA binds to the surface of the particles in the suspension to stabilize the particles and control their dispersion.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Golodnitsky to include PAA in the first and second precursor in order to stabilize the particles and control their suspension as suggested by Gaben.
Regarding claim 54, Goebel teaches the first and second precursor comprises acetone and acetylacetone (paragraph [0042]-[0043], [0045], [0048], [0061]).
Claim(s) 55-57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Golodnitsky et al. (U.S. Patent Application Publication 2013/0244102) as applied to claim 1 above, and further in view of Jeng et al. (U.S. Patent Application Publication 2011/0024294).
Regarding claim 55, Golodnitsky teaches the method as described above in claim 1.
Golodnitsky does not explicitly articulate the step (ii) is performed in an electrochemical cell comprising: a first EPD electrode and a second EPD electrode, which are in ionic contact with the membrane; and a first compartment and a second compartment, which are separated by the membrane, wherein the first precursor is disposed in the first compartment and the second precursor is disposed in the second compartment.
Jeng, directed to a method of making a MEA by electrophoresis (title, abstract), teaches an electrochemical cell (i.e., EPD cell) with a first (31) and second (32) EPD electrode paragraph [0018]-[0019]), which are in ionic contact with a membrane (22) (see figure 2), and a first compartment and a second compartment (i.e., anode and cathode compartment) (paragraph [0018]), which are separated by the membrane (see figure 2) (paragraph [0018]), and a first precursor disposed in the first compartment and a second precursor disposed in the second compartment (paragraph [0018]).
It would have been obvious to a person of ordinary skill in the art before the effective filing dated of the claimed invention to Modify Golodnitsky and utilized the cell configuration as taught by Jeng in order to predictably contained the liquid suspension in the compartment space and concurrently perform the electrophoresis as the compartments are filled with the precursors at the same time (paragraph [0018]).
Regarding claim 56, Golodnitsky, as modified by Jeng, teaches the first compartment is disposed within the second compartment; or wherein the first compartment and the second compartment are linearly aligned; or wherein the first EPD electrode is disposed within the first compartment and the second electrode is disposed within the second compartment (see figure 2) (paragraph [0018]).
Regarding claim 57, Golodnitsky, as modified by Jeng, teaches the EDP process is performed for 0-180 minutes (paragraph [0019]). It is noted that Jeng differ in the exact same time range as recited in the instant claim however, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the time range of Jeng overlap the instant claimed of 5 seconds to 30 minutes therefore is considered to establish a prima facie case of obviousness. It has been held in the courts that 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).
Allowable Subject Matter
Claim 53 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. In other words, claim 40 would be allowable if rewritten in independent form to incorporate:
all the limitations of claim 40 and claims 52-53.
Applicant may consider amending claim 40 accordingly to place the application in condition of allowance.
The prior art whether alone or in combination do not teach or fairly suggest the limitations “the first precursor comprises: about 70-95 % (w/w) LiFePO4; about 0.01-1 % (w/w) branched PEI; about 0.5-5 % (w/w) PAA; and about 5-20% carbon black; and wherein the second precursor comprises: about 70-95 % (w/w) Li4Ti5O2;about 1-7 % (w/w) PAA; and about 5-20% carbon black.”.
In addition, for the same reasons above for claim 53, claim 61 is allowed.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Trajkovska-Broach et al. (U.S. Patent Application Publication 2015/0027613). Trajkovska-Broach teaches electrophoretic deposition can be controlled by concentration of powders and use of precursors (see table 1).
Hendriksen et al. (U.S. Patent Application Publication 2011/0132772). Hendriksen teaches depositing a first precursor (12) and a second precursor (13) on an electrically insulating ion-permeable membrane (11) by electrophoretic deposition (paragraph [0043], [0079]) (see figure 1).
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHRISTIAN ROLDAN/Primary Examiner, Art Unit 1723